Role Overview for Chief Intellectual Property Counsel – San Francisco, CA
JRG Partners is proud to partner with a pioneering, high-growth technology leader based in San Francisco, CA, in their search for a distinguished Chief Intellectual Property Counsel. Our client is at the forefront of innovation, developing disruptive technologies that are reshaping the industry. This is a rare opportunity to join a dynamic executive team and take ownership of a sophisticated global intellectual property portfolio. As the Chief IP Counsel, you will be the principal architect of the company’s IP strategy, responsible for protecting its most valuable assets and leveraging them for strategic advantage. Reporting directly to the General Counsel, this role demands a visionary leader with deep legal expertise, exceptional business acumen, and a proven track record of building and managing world-class IP functions. You will serve as a key strategic advisor to the C-suite and board of directors, providing critical guidance on all matters related to patents, trademarks, copyrights, and trade secrets. This position is not merely about legal defense; it is about proactively shaping the company’s competitive landscape, enabling future growth, and fostering a culture of innovation. You will lead a dedicated team of legal professionals and collaborate extensively with R&D, product development, marketing, and corporate development teams to ensure that the IP strategy is seamlessly integrated with all facets of the business. The ideal candidate will be a strategic thinker, a hands-on leader, and a skilled negotiator, capable of navigating the complexities of global IP law while driving tangible business results in a fast-paced, innovative environment.
Key Responsibilities of Chief Intellectual Property Counsel – San Francisco, CA
Global IP Strategy Development
Design, implement, and continuously refine a comprehensive global IP strategy that aligns with the company’s long-term business objectives, product roadmaps, and competitive positioning. Provide forward-looking counsel to senior leadership on emerging IP trends and risks.
Portfolio Management and Prosecution
Oversee the entire lifecycle of the company’s global patent, trademark, and copyright portfolio. This includes managing invention disclosure processes, making strategic filing decisions, overseeing prosecution with outside counsel, and handling annuities and maintenance.
IP Litigation and Dispute Resolution
Manage and direct all IP-related litigation, including patent infringement assertions, trademark disputes, and trade secret misappropriation claims. Develop litigation strategies, manage discovery, select and oversee outside litigation counsel, and negotiate settlements.
Transactional IP and M&A Support
Lead all IP-related aspects of corporate transactions, including mergers and acquisitions, divestitures, strategic alliances, and joint ventures. Conduct thorough IP due diligence, draft and negotiate complex IP-related agreements, and manage post-acquisition integration.
Licensing and Monetization
Identify and execute opportunities to monetize the company’s IP portfolio through strategic licensing agreements, technology transfers, and other commercial arrangements. Draft and negotiate a wide range of inbound and outbound licensing agreements.
Product Counseling and Risk Mitigation
Collaborate closely with engineering and product teams from ideation to launch to identify patentable inventions, conduct freedom-to-operate analyses, and mitigate infringement risks. Provide counsel on design-arounds and patentability.
Team Leadership and Development
Lead, mentor, and grow a high-performing team of IP attorneys, patent agents, and paralegals. Foster a collaborative and innovative team culture, and manage the professional development of team members.
Budget and Vendor Management
Develop and manage the annual IP department budget. Select, manage, and evaluate the performance and cost-effectiveness of outside counsel and other external vendors globally.
Policy, Training, and Compliance
Develop and implement internal policies and procedures related to IP protection and trade secret management. Conduct regular training for employees, particularly within R&D, to promote IP awareness and ensure compliance. Stay abreast of changes in global intellectual property laws and regulations.
Trademark and Brand Protection
Oversee the global trademark portfolio, including clearance, prosecution, and enforcement. Manage domain name portfolios and lead efforts to combat online infringement and brand dilution.
Requirements for the Chief Intellectual Property Counsel – San Francisco, CA
Education
A Juris Doctor (J.D.) from a top-tier, ABA-accredited law school is required. A Bachelor’s degree in a technical field such as Electrical Engineering, Computer Science, or a related discipline is strongly preferred.
Bar Admission
Must be an active member in good standing of at least one U.S. state bar, with a preference for admission to the State Bar of California.
USPTO Registration
Registration to practice before the U.S. Patent and Trademark Office (USPTO) is mandatory.
Professional Experience
A minimum of 15+ years of progressive experience in intellectual property law, with a combination of experience at a leading law firm and a significant period spent in-house at a technology or life sciences company.
Leadership Experience
At least 5 years of demonstrated experience managing an in-house IP function and leading a team of legal professionals. Proven ability to build, scale, and mentor a high-performing team.
Substantive Expertise
Deep, substantive expertise across all domains of IP, including patent prosecution, IP litigation, strategic portfolio management, and technology transactions. Extensive experience with software, hardware, and internet-related technologies is highly desirable.
Transactional Acumen
Significant experience leading the IP aspects of complex corporate transactions, including M&A due diligence and negotiating sophisticated licensing and development agreements.
Business Acumen
Strong ability to understand business objectives and translate complex legal concepts into practical, actionable advice for non-legal stakeholders. A strategic mindset with the ability to balance legal risk with business goals.
Communication Skills
Exceptional written and verbal communication skills, with the ability to persuasively articulate ideas to a wide range of audiences, from engineers to the Board of Directors.
Location
Ability to work from our client’s headquarters in San Francisco, CA, in a hybrid model.
Benefits & Perks Offered
Our client offers a highly competitive compensation and benefits package designed to attract and retain top-tier talent. This includes:
Competitive Compensation
A compelling base salary, annual performance-based bonus, and a significant long-term equity incentive package.
Comprehensive Health Coverage
Premium medical, dental, and vision insurance plans for you and your dependents.
Retirement Savings
A 401(k) plan with a generous company match to help you plan for your future.
Generous Paid Time Off
A flexible and generous paid time off (PTO) policy, in addition to company-paid holidays.
Professional Development
A substantial annual budget for continuing legal education (CLE), professional memberships, conferences, and other development opportunities.
Wellness Programs
Access to wellness resources, including gym memberships, mental health support, and employee assistance programs.
Relocation Assistance
A comprehensive relocation package is available for exceptional candidates.
Work-Life Balance
A commitment to a healthy work-life balance within a collaborative and supportive corporate culture.
How to Apply
JRG Partners is exclusively managing this search. To be considered for this exceptional opportunity, please submit your resume and a cover letter detailing your relevant experience and strategic vision for an innovative IP function. We are committed to a confidential and thorough review of all applications. If your background aligns with the requirements of this role, one of our senior legal recruiters will contact you directly to discuss the position in greater detail.
We encourage you to apply promptly as we are actively interviewing qualified candidates. To submit your application or to Intellectual Property Recruiters, please proceed through the appropriate links. We look forward to receiving your application.
