Intellectual Property & Patent Counsel

Advantest America, Inc. (“AAI”) is seeking to hire an Intellectual Property and Patent Attorney to join the AAI legal department.  Reporting to the Advantest America, Inc. General Counsel this individual will have responsibility for Intellectual Property matters within Advantest America’s and its wholly subsidiaries including IP and Patent Counseling, strategic portfolio planning, trade secret protection and enforcement, general counseling on IP matters including patent prosecution, development of training content and programs for the AAI and subsidiary inventor community.

The candidate will be working with AAI’s engineering teams, outside counsel and Advantest Corporation’s Global Intellectual Property team to develop patent applications and review documents to be filed with USPTO and foreign jurisdictions. The candidate will work with the AAI General Counsel, Global IP and various department and executives to develop plans and strategies for identifying and harvesting patentable innovations, guided by a deep understanding of client priorities, and Advantest IP goals and resources.  Duties and responsibilities may include:

• Identify patentable inventions, draft patent applications, work together with outside counsel on and global IP regarding patent filing, prosecution and patent portfolio matters and collaborate with AAI R&D on inventions and freedom to operate. 
• Conduct patent and prior art search, competitive landscape analysis, patentability, and freedom to operate analysis. 

• Prepare and review patent applications, and official responses and other documents related to patent application preparation and prosecution including  i) new applications or office action responses prepared by outside counsel, and ii) other papers including Information Disclosure Statements prepared by internal team.
• Counsel in areas related to Intellectual Property procurement and protection  
• Educate and work with the GC to develop training content for the engineering and management groups in areas related to Intellectual Property law fundamentals and developments, and best practices for Intellectual Property procurement and protection  

• Conduct interviews with engineers/inventors to identify and protect patentable subject matter  
• Develop Intellectual Property protection and procurement strategies with management  
• Work with inside and outside counsel in areas related to patent procurement and protection  
• Partner with GC and outside counsel to conduct Intellectual Property due diligence in connection with corporate transactions  
• Support review, as needed, of IP provisions of contract templates and IP clauses in relevant Advantest contracts.

• 8+ years of experience as an attorney practicing in Intellectual Property and patent prosecution – preferably with experience with patent litigation, patent preparation and prosecution; and patent or IP strategy counseling.
• J.D. from an ABA accredited law school.
• Strong background in all aspects of patent prosecution (patent licensing or litigation experience is a plus, but not required – the present position does not include patent licensing or litigation) 
• Strong organizational skills with a demonstrated ability to manage multiple tasks and excellent client relation skills 
• Bachelor’s and Juris Doctorate degrees are required 
• Underlying Bachelor’s degree in one or more of the following areas preferred: electrical, mechanical, industrial, computer science, or similar
• Admission in good standing in the state of California 
• Admission in good standing to the US PTO 
• Excellent communication skills, both verbal and written
• Ability to work independently as well as within a team environment 
• Location will be primarily in San Jose, CA but other locations at or in close proximity to a major AAI office on the West Coast (US) may be available