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The Patent Counsel / Senior Patent Counsel will play a key role protecting Oracle's intellectual property, supporting Oracle's patent prosecution, portfolio management, licensing, and IP risk management functions. Hybrid (2-3 days per week in office) from Oracle’s Redwood City, CA office is preferred; hybrid from other U.S. Legal offices or remote from other U.S. locations will also be considered. Two people are needed - will consider counsel or senior counsel level for either.

About the Team:

Oracle Legal’s Patent, Trademark and Copyright group provides broad-based intellectual property support to Oracle’s product development and business organizations. The group is responsible for developing and implementing strategies and policies for identifying, protecting, and managing the company’s intellectual property. Key practice areas include: patent prosecution and portfolio management; IP licensing; IP risk analysis and litigation support; M&A support; copyright, trademark and brand management; AI-related regulatory compliance support; and legal support for Oracle’s participation in standard-setting organizations.

About the Position:

The patent counsel will report to Oracle’s Senior Vice President and Associate General Counsel for the Patent, Trademark & Copyright Legal team, and will provide broad-based support for Oracle's patent program, including outreach and training for engineering groups, invention harvesting, invention disclosure evaluation, and patent prosecution management. The attorney will also support patent investigations and risk analysis, patent licensing, pre-litigation and litigation support, and standards organization participation.

If you have the experience and ability, and you thrive in a flexible and highly sophisticated work environment, running multiple projects and priorities, then you may be the person we are seeking to join our team!

Responsibilities include:

• Work with engineering groups to identify and harvest patentable innovations; 
• Review invention disclosures with engineers and determine patent filing strategy; 
• Provide IP-related training to developers and product managers;
• Manage outside counsel in preparation and prosecution of patent applications; 
• Investigate and advise on third party patent positions; 
• Counsel developers and management on patent, trademark, copyright and trade secret matters, and create and implement intellectual property policies and guidelines;
• Work closely with other Oracle attorneys on intellectual property litigation, IPRs and other post-grant proceedings, transactional matters, and acquisitions;  
• Study and provide counsel on legislative, administrative, and court developments in domestic and foreign IP law and adjacent non-IP regulatory matters;
• Work reciprocally within Legal and with business partners to identify and implement creative and pragmatic legal and business solutions.

This is not a comprehensive list, and the role may develop to include additional or different responsibilities.

Desired Qualifications:

• J.D. or LLM from accredited U.S. law school.
• Licensed to practice law in the U.S and licensed to practice before the U.S. PTO.
• Minimum of five years domestic and international intellectual property experience, at a law firm or in-house law department, including patent prosecution, patent portfolio strategy and management, patent investigations and risk analysis, intellectual property related contract drafting and negotiation, and intellectual property litigation.
• Substantial patent prosecution experience in enterprise software domains, including: database; data management; cloud-based infrastructure, platform and applications; artificial intelligence and machine learning; middleware; operating systems; virtualization; and data security.
• Experience in networking, telecommunications, microelectronics, and semiconductor arts is a plus. 
• Excellent writing, analysis, speaking, and social skills, including the ability to connect with engineers, development managers, business executives, and external partners in a manner that builds, maintains, and improves positive and productive working relationships.
• Experience with client training in varied formats including live presentation, video, and other media.
• Ability to solve problems in a manner that takes both strategic and practical considerations into account.
• Ability to be versatile, pragmatic, dedicated, and creative in identifying and assessing risks, and developing consistent, practical solutions and efficient legal processes that balance business and legal considerations to meet deadlines with a high level of initiative and good judgment.
• Ability to work independently, but also to collaborate effectively with departmental and business colleagues.
• Validated ability to learn new issues and subject areas quickly, handle challenging priorities and maintain good judgment, sense of humor and focus when working in a dynamic environment.

All Oracle attorneys are expected to maintain the highest integrity and uphold Oracle’s Code of Ethics and Business Conduct.

Career Level - IC3

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Disclaimer:

Certain US customer or client-facing roles may be required to comply with applicable requirements, such as immunization and occupational health mandates.

Range and benefit information provided in this posting are specific to the stated locations only

US: Hiring Range: from $109,100 to $223,500 per annum. May be eligible for bonus and equity.

Oracle maintains broad salary ranges for its roles in order to account for variations in knowledge, skills, experience, market conditions and locations, as well as reflect Oracle’s differing products, industries and lines of business.
Candidates are typically placed into the range based on the preceding factors as well as internal peer equity.

Oracle US offers a comprehensive benefits package which includes the following:
1. Medical, dental, and vision insurance, including expert medical opinion
2. Short term disability and long term disability
3. Life insurance and AD&D
4. Supplemental life insurance (Employee/Spouse/Child)
5. Health care and dependent care Flexible Spending Accounts
6. Pre-tax commuter and parking benefits
7. 401(k) Savings and Investment Plan with company match
8. Paid time off: Flexible Vacation is provided to all eligible employees assigned to a salaried (non-overtime eligible) position. Accrued Vacation is provided to all other employees eligible for vacation benefits. For employees working at least 35 hours per week, the vacation accrual rate is 13 days annually for the first three years of employment and 18 days annually for subsequent years of employment. Vacation accrual is prorated for employees working between 20 and 34 hours per week. Employees working fewer than 20 hours per week are not eligible for vacation.
9. 11 paid holidays
10. Paid sick leave: 72 hours of paid sick leave upon date of hire. Refreshes each calendar year. Unused balance will carry over each year up to a maximum cap of 112 hours.
11. Paid parental leave
12. Adoption assistance
13. Employee Stock Purchase Plan
14. Financial planning and group legal
15. Voluntary benefits including auto, homeowner and pet insurance

The role will generally accept applications for at least three calendar days from the posting date or as long as the job remains posted.

Required Skills