US Senior IP Counsel/Patent Attorney

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US Senior IP Counsel/Patent Attorney
Company: Hitachi America, Ltd.
Division: IP Group
Location: US Remote - NY or CA preferred
Status: Regular, Full Time

The Company

About Hitachi America, Ltd.

Hitachi America, Ltd. is the regional headquarters for Hitachi Group companies in the Americas, overseeing the U.S., Canada, and Latin America markets. Headquartered in Santa Clara, California, Hitachi Americas has been deeply committed to its Social Innovation Business since its establishment in 1959, addressing society's most pressing challenges through innovative solutions. Leveraging its expertise and resources, Hitachi Americas and its subsidiary companies operate across diverse sectors, including transportation, energy, mobility, industrial manufacturing, healthcare, digital engineering, data analytics and others. Driven by Digital, Green, and Innovation, Hitachi Americas remains at the forefront of pioneering solutions that shape the future. For further details, please visit https://www.hitachi.us/.

Through its Social Innovation Business (SIB) that brings together IT, OT (Operational Technology) and products, Hitachi contributes to a harmonized society where the environment, wellbeing, and economic growth are in balance. Hitachi operates globally in four sectors - Digital Systems & Services, Energy, Mobility, and Connective Industries - and the Strategic SIB Business Unit for new growth businesses. With Lumada at its core, Hitachi generates value from integrating data, technology and domain knowledge to solve customer and social challenges. Revenues for FY2024 (ended March 31, 2025) totaled 9,783.3 billion yen, with 618 consolidated subsidiaries and approximately 280,000 employees worldwide. Visit us at www.hitachi.com.

What you will be doing
In further development of its Global IP Function, Hitachi Group has created a key role for a senior-level IP Counsel who will report to the Chief IP Officer (CIPO) and support Hitachi operations in the U.S. (location flexible, preferably NY or CA).

This new position will afford the right candidate the opportunity to participate in an exciting period of growth for the company through IP leadership and support in the globalization of the Company's activities in particular in the area of Social Innovation. This role is important to the advancement of Hitachi IP in the region and globally as an important partner and contributor to the growth of the Hitachi Group.

Reporting to the regional IP lead, the primary focus of the role is to work with US regional businesses to provide IP guidance to operations in a business focused approach. The position will work closely with the CIPO, the Global IP Team and the regional businesses.

In collaboration with other Group IP Departments, primary responsibilities of this role are directed to supporting the IP Legal Services and Patent Portfolio Development functions in furtherance of transformation of the global IP function. Responsibilities of the role include defining regional IP Strategy and a meaningful value driven patent portfolio, as well as supporting M&A and litigation/pre-litigation matters.

What you bring to the team
We're looking for a team player who is independent-minded and motivated by delivering great work and the Hitachi vision.

The candidate must feel comfortable in taking an active role in engaging the various businesses to provide legal advice in a technology setting, in particular in software, IT/OT and Physical AI.

While this position is envisioned to have a mix of patent prosecution and counseling in legal matters, patent prosecution (i.e., drafting and prosecuting) is a routine responsibility of this role, so intimate familiarity with patent activity (drafting, prosecuting, process and procedure) is a pre-requisite.

Job Responsibilities
IP Legal Services
*Partner cross functionally with Group Legal, R&D, and business teams to deliver proactive, business focused IP counseling.
*Advise on IP matters in commercial, transactional, and dispute contexts, including pre litigation and litigation support.
*Draft, negotiate, and manage IP related agreements, including licenses, technology development agreements, and NDAs.
*Support IP aspects of M&A, strategic transactions, and business initiatives.
*Counsel U.S. businesses on freedom-to-operate risk, conducting and/or supervising freedom to operate/clearance investigations.
*Oversee and manage outside counsel across IP legal matters.
*Contribute to development and execution of Global IP strategy, including policies and procedures.

Patent Portfolio Development (PPD)
*Counsel U.S. businesses and technical leadership on patent strategy.
*Wafting anork directly with engineers and technologists to identify patentable inventions and drive invention disclosure quality and volume.
*Lead invention harvesting activities, including design reviews, brainstorming sessions, and innovation workshops.
*Lead patent procurement and portfolio development efforts, including:

• Advising on patentability, conducting and/or supervising patentability investigation

• Drafting prosecuting U.S. patent applications;

• Coordinating international filing and prosecution strategies;

• Managing patent portfolios, including office action responses informed by business input;

• Overseeing outside counsel on global patent prosecution matters.

*Manage and continuously improve invention disclosure submission, review, and evaluation processes.

Requirements
*USPTO qualified Patent Attorney with admission to a U.S. State Bar.
*Minimum of 10 years of experience in the legal field of intellectual property in a multi-national setting, including transactional matters (licensing and other IP-related contracts), enforcement of IP rights, and managing contested matters including litigation and pre-litigation advice, and developing patent portfolios, in particular in the areas of computer science, software and ITxOT/Physical AI.
*Thorough expert knowledge of US IP laws, rules, regulations and practice and familiarity with the relevant counterpart systems (e.g., EU).
*Strong patent prosecution skills.
*Proven ability to quickly identify, prioritize and analyze issues, to create solutions, to communicate in a counseling role, and to work effectively and team with all levels of management and members of the IP and legal departments.
*Strong ability to be a counselor to the group businesses through clear communication skills- written and oral.
*Demonstrated ability to work with and manage outside counsels.
*Experience working in a global IP environment.
*Some regional travel will be required.
*Fluency in English required.

Our Values
We are proud to say we are an equal opportunity employer and welcome all applicants for employment without attention to any factor that doesn't impact your ability to do the job, including race, color, religion, sex, sexual orientation, gender identity, national origin, veteran or disability status. We are proud of Japanese heritage, with our values expressed through the Hitachi Spirit:
Wa - Harmony, Trust, Respect
Makoto - Sincerity, Fairness, Honesty, Integrity
Kaitakusha-Seishin - Pioneering Spirit, Challenge

For California only (as required by California's Pay Transparency for Pay Equity Act (SB 1162): A good faith estimate of the expected salary for this position in our California office salary range that the employer reasonably expects to pay for the position upon hire is $153,614 - $192,017. Pay is determined based on a variety of factors including, but not limited to, depth of experience in the practice area. Employees are eligible to participate in Hitachi America's variable pay program, subject to the program's conditions and restrictions.

Qualified Applicants with arrest or Conviction records will be considered for Employment in accordance with the Los Angeles County Fair Chance Ordinance for Employers and the California Fair Chance Act.

For residents of New York, Washington, Ohio and Illinois as required under applicable pay transparency laws, the expected base salary for this position is $153,614 - $192,017. Pay is determined based on a variety of factors including, but not limited to, depth of experience in the practice area. Employees are eligible to participate in Hitachi America's variable pay program, subject to the program's conditions and restrictions.

Equal Opportunity Employer (EOE)-Females/Minorities/Protected Veterans/Individuals with Disabilities

If you need a reasonable accommodation to apply for a job at Hitachi, please send the nature of request and contact information to accommodation@hal.hitachi.com. Queries other than accommodation requests will not be responded to.