Senior Patent & IP Counsel

This is a fully remote position, open to applicants in Illinois.

📋 Description

• Build and oversee the intellectual property function at Lyten.

• Take ownership of the patent strategy and manage filing priorities.

• Acquire technical expertise in Lyten’s product lines, including batteries, concrete, composites, and sensors.

• Collaborate regularly with engineering and product teams to ensure patent decisions align with the product roadmap and competitive environment.

• Lead the strategy for patent claims.

• Conduct or supervise freedom-to-operate and infringement analyses for new products and acquisition targets.

• Review and prioritize invention disclosures while collaborating with inventors and engineers to refine these disclosures.

• Develop and manage the annual budget for patents and intellectual property.

• Oversee external patent counsel and manage the patent prosecution docket across relevant jurisdictions.

• Negotiate fee arrangements and oversee the cost and quality of external IP expenditures.

• Direct the strategy and maintenance of the patent portfolio, including the pruning of low-value applications and patents.

• Maintain the IP docketing/management system, ensuring the portfolio is well-documented, assigned, and ready for due diligence.

• Review and negotiate IP clauses in commercial, collaboration, and research agreements.

• Lead IP due diligence for acquisitions and asset purchases.

• Address chain-of-title issues and licensing uncertainties that arise from mergers and acquisitions integration.

• Provide guidance on trademark strategies and enforcement, trade secret protection, and the IP aspects of employment and contractor agreements.

• Coordinate with internal counsel on IP issues related to customers, suppliers, and licensing.

• Manage relationships with IP consultants and other external IP resources.

• Assist with broader legal matters outside the core IP focus as necessary.

⛳️ Requirements

• Juris Doctor (J.D.) and active law license in at least one U.S. state.

• Required registration to practice before the USPTO.

• Over 7 years of experience in intellectual property.

• Proven experience in drafting and prosecuting patent applications.

• Experience in establishing patent filing strategies and priorities.

• A history of functioning as a practicing drafter rather than just managing outside counsel.

• Background working in-house or at a law firm for a technology, materials, or hardware company.

• Bachelor’s degree in a relevant scientific or engineering field (materials science, chemistry, electrical engineering, or similar).

• Demonstrated expertise in competitive claim drafting and conducting freedom-to-operate (FTO) or infringement analyses.

• Experience with IP due diligence in mergers and acquisitions or asset purchase scenarios.

• Strong drafting capabilities for licensing, collaboration, and confidentiality agreements.

• U.S. citizenship is mandatory.

• Eligibility to access technology and technical data governed by U.S. export control laws.

• Preferred: familiarity with AI-assisted tools throughout the IP workflow.

• Preferred: a Master’s degree or Ph.D. in a relevant scientific or engineering discipline.

• Preferred: experience supporting an IP function in a rapidly growing company.

• Preferred: experience with patent portfolios in battery, energy storage, or advanced materials.

• Preferred: experience with cross-border IP challenges in international jurisdictions.

• Preferred: experience with trademark prosecution and opposition proceedings before the USPTO.

• Preferred: familiarity with an IP management or docketing platform such as Anaqua, CPI, or PatSnap.

🏝️ Benefits

• Tiered bonus structure.

• Equity options.

• Healthcare coverage.

• Dental insurance.

• Vision insurance.

• Corporate discounts.

• Paid holidays.

• Paid time off (PTO).

• Sick leave.

• 401K retirement plan.

• Employee relocation assistance (if applicable).

• Opportunities for career advancement.

• Work focused on mission-driven initiatives in energy, mobility, and materials innovation.

• Engage with cutting-edge materials science, energy storage, and advanced manufacturing technologies.

• Enjoy a collaborative and trust-based workplace culture.