Senior IP Counsel
OR · On-site +1
Oversee patent prosecution and portfolio lifecycle management, including coordinating with domestic ... Enforcement & Risk Management * Assist with IP enforcement, licensing, and litigation strategy.
Senior IP Counsel
OR · On-site +1
Oversee patent prosecution and portfolio lifecycle management, including coordinating with domestic ... Enforcement & Risk Management * Assist with IP enforcement, licensing, and litigation strategy.
Patent Prosecution Assistant information
What does a patent prosecution assistant do?
A Patent Prosecution Assistant supports patent attorneys and agents with the administrative aspects of filing and managing patent applications. Their tasks often include preparing and filing documents with the U.S. Patent and Trademark Office (USPTO), tracking deadlines, maintaining client files, and communicating with clients about the status of their applications. They ensure that all paperwork complies with legal requirements and help manage the workflow of patent prosecution from application through to issuance. Strong organizational skills and attention to detail are essential for success in this role.
What are the key skills and qualifications needed to thrive as a patent prosecution assistant, and why are they important?
To thrive as a Patent Prosecution Assistant, you generally need strong organizational skills, attention to detail, and familiarity with patent procedures, often supported by a bachelor’s degree or paralegal certification. Proficiency with intellectual property management systems, USPTO filing systems (like EFS-Web or Patent Center), and document management software is typical. Excellent written communication, time management, and the ability to collaborate with attorneys and inventors are crucial soft skills. These capabilities ensure accurate, timely, and compliant handling of complex patent documentation and deadlines, which is vital for successful patent prosecution.
What are some common challenges faced by patent prosecution assistants, and how can they be managed on the job?
Patent Prosecution Assistants often encounter challenges such as managing tight deadlines for filing documents with the USPTO, ensuring accuracy in legal correspondence, and tracking multiple cases simultaneously. Staying organized with robust docketing systems and maintaining clear communication with attorneys and inventors are essential strategies to manage these pressures. Proactively seeking clarification on complex matters and utilizing checklists can help minimize errors and improve efficiency in this fast-paced environment.
What is the difference between Patent Prosecution Assistant vs Patent Paralegal?
| Aspect | Patent Prosecution Assistant | Patent Paralegal |
|---|---|---|
| Credentials | Typically requires paralegal certification or relevant legal experience | Paralegal certification or legal assistant training |
| Work Environment | Law firms, corporate legal departments, patent law firms | Law firms, corporate legal departments, patent law firms |
| Responsibilities | Assisting with patent application processes, document preparation, docketing | Preparing legal documents, managing case files, supporting patent prosecution |
| Industry Usage | Commonly employed in patent prosecution teams | Used broadly across legal support roles, including patent law |
Both roles support patent prosecution but differ slightly in responsibilities and credentials. Patent Prosecution Assistants focus on patent-specific tasks like docketing and application support, while Patent Paralegals handle broader legal document management. Both are essential in patent law environments and often overlap in skills and work settings.
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For Patent Prosecution Assistant jobs in Oregon, the most frequently searched job titles are:
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The top searched job categories for Patent Prosecution Assistant jobs in Oregon are:
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Job description
The Senior Legal Counsel, IP will be responsible for developing and executing a comprehensive global intellectual property and brand protection strategy, while supporting complex IP matters within commercial contracts. This role will include identifying, protecting, and leveraging innovations and brand assets, building and managing a robust patent and trademark portfolio, and safeguarding the company's brand integrity and reputation across all markets. The position will oversee outside counsel (domestically and internationally), help shape brand and intellectual property protection strategies, and ensure alignment with the company's global business and brand objectives. In addition, the role will provide strategic support on IP-related commercial contracting matters. This is a high-impact opportunity to shape and expand our IP and brand protection program in a fast-paced, tech-forward industry operating across multiple jurisdictions, while helping RSI address key commercial priorities.
What You'll Do:
IP Strategy Development
- Define and drive a comprehensive global intellectual property strategy aligned with the company's business, product, and brand objectives, with an emphasis on patent protection.
- Establish priorities and frameworks for protecting innovations and brand assets across jurisdictions, ensuring a coordinated and scalable approach.
- Advise senior leadership on IP and brand-related risks, opportunities, and strategic investments, including portfolio expansion and competitive positioning.
Patent Portfolio Development & Management
- Develop and implement a global patent strategy aligned with the company's business and technology roadmap.
- Build, manage, and maintain a strategic international patent portfolio covering proprietary technologies in online sports betting, casino gaming, user experience, platform architecture, and related technologies.
- Partner with R&D, product, and engineering teams to support invention identification, evaluation, and protection across key jurisdictions.
- Oversee patent prosecution and portfolio lifecycle management, including coordinating with domestic and international outside counsel.
- Monitor and assess risks and opportunities related to the company's patent portfolio, supporting strategic decision-making and alignment with business objectives.
Trademark & Brand Protection
- Develop and implement a global trademark and brand protection strategy aligned with the company's business and market expansion plans.
- Partner with marketing, product, and regional teams to support brand development, launches, and campaigns, ensuring appropriate protection and consistent use of brand assets.
Internal Education & Awareness
- Educate and train internal stakeholders (e.g., product, engineering, marketing) on IP best practices and invention identification.
- Foster a culture of innovation and IP awareness across departments and geographies.
Portfolio Evaluation & Competitive Intelligence
- Monitor industry trends, competitor portfolios, and emerging technologies globally to identify opportunities and potential risks.
- Conduct IP landscape analyses and freedom-to-operate assessments in key markets.
Enforcement & Risk Management
- Assist with IP enforcement, licensing, and litigation strategy.
- Partner with business and technical teams to anticipate and manage IP challenges while supporting responsible innovation and market readiness.
Commercial Contracting
- Provide practical legal guidance on IP-related contract structure, risk allocation, licensing and brand protection, indemnification, limitation of liability, and other key commercial terms.
- Partner with procurement, product, technology, finance, and business teams to support efficient contract execution while protecting the company's legal and business interests.
- Identify, assess, and mitigate legal and operational risks in IP licensing arrangements.
What You'll Bring:
- Juris Doctor (JD) from an accredited U.S. law school.
- Active bar membership in at least one U.S. jurisdiction.
- Admission to at least one state bar.
- 7+ years of experience in intellectual property law experience, with a strong emphasis on patent work in software, gaming, or related technologies; prior in-house experience (2+ years) is a plus.
- Registration to practice before the U.S. Patent and Trademark Office (USPTO) is preferred; experience drafting patent applications is a plus.
- Demonstrated experience managing global patent portfolios.
- Familiarity with managing trademark portfolios and brand assets.
- Experience drafting and negotiating complex commercial agreements, particularly those involving technology, licensing, SaaS, or IP-related provisions.
- Familiarity with online gaming, mobile platforms, and/or sports betting technologies, and experience developing and managing patent portfolios in a technology or gaming environment is preferred.
- Excellent analytical, strategic thinking, and communication skills.
- Ability to work cross-functionally with technical and business teams across global operations to balance legal risk with business objectives.
- Experience supporting product launches and software lifecycle management.
- Strong organizational skills with the ability to manage multiple priorities in a fast-paced, evolving environment.
- Prior in-house experience is preferred.
- Able to travel occasionally both domestically and internationally #LI-REMOTE #LI-PROMOTE
About Rush Street Interactive
Sourced by ZipRecruiter
Industry
Gambling activities
Company size
201 - 500 Employees
Headquarters location
Chicago, IL, US
Year founded
2012