Senior Director, Patent Prosecution

Senior Director, Patent Prosecution
San Mateo, CA

As Senior Director of Patent Prosecution at Sony Interactive Entertainment LLC (“SIE”), you will be the primary counsel responsible for handling the prosecution of SIE’s global patent portfolio and leading the prosecution teams located in SIE’s San Mateo, London, and Tokyo offices. You will be responsible for leading SIE’s efforts to grow its portfolio of utility patents, design patents, and registered designs, and will set the strategic direction and priorities of SIE’s patent portfolio. You will also be responsible for providing advice on patent-related issues to SIE legal and business teams, and training business teams on the importance of obtaining protection for SIE’s valuable inventions.

You will report to the Vice President, Intellectual Property & Litigation and be a senior level member of SIE’s global legal leadership team. You will coordinate prosecution-related activities across SIE’s business and legal functions globally. The position will be based in San Mateo, California.

Responsibilities:

• Manage the prosecution of SIE’s global patent portfolio of utility patents, design patents, and registered designs across various product and technology areas, including invention intake, review, and strategic portfolio assessment.
• Collaborate effectively and efficiently with outside counsel to manage patent preparation and prosecution.
• Manage and develop the SIE patent prosecution teams located in San Mateo, London, and Tokyo, inspiring the teams to perform at their best and enhancing their opportunities for growth.
• Lead SIE’s efforts to grow its portfolio through patent workshops and other patent mining activities.
• Advise SIE leadership on strategic patent-related issues.
• Lead support for SIE legal and business teams on patent-related issues and train business teams on the importance of obtaining protection for SIE’s valuable inventions.
• Analyze technical trends and developments in the videogame industry and apply this analysis to the strategic direction of SIE’s patent portfolio.
• Partner with team members at all levels of the global organization and develop positive and collaborative relationships with engineering, product management and legal teams to support the patent prosecution program.
• Refine and improve SIE’s processes for patent prosecution and intake of patentable inventions, including patent categorization, docketing, and annuity payments.
• Maintain and monitor SIE’s budget and track spending for all global prosecution-related activities.

Qualifications:

• Juris Doctorate degree and admission to practice before the United States Patent and Trademark Office.
• An advanced degree in electrical engineering, computer science, or other area relevant to IP practice in the videogame industry.
• At least 15 years of experience as a practicing attorney primarily in the area of patent prosecution, preferably with a mix of in-house and private practice experience.
• Demonstrated experience and track record of success in building and maintaining a robust global patent portfolio, including portfolio creation, strategy, and counseling.
• Experience in preparing and prosecuting domestic and international patent applications and providing patentability, validity, and infringement assessments.
• A strong understanding of patent law and principles, and the ability to efficiently review, interpret, and analyze complex legal information.
• Outstanding oral, written, and interpersonal communication skills.
• Ability to work cross-functionally and internationally with multiple partners and to implement global strategies.

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