Our client, a publicly traded digital health company leveraging technology and AI to transform care delivery, has exclusively retained Solutus Legal Search to assist the executives in their search for a Senior Patent Counsel. This role reports to the Associate General Counsel, Product, and will work closely with other members of the Legal & Compliance team, as well as cross-functional stakeholders across the organization — including access to senior leadership.
Our client is seeking a strategic and hands-on Senior Patent Counsel who will build and manage the company’s intellectual property portfolio and who is comfortable (indeed eager) to adopt AI tools to help them move faster and more efficiently. As the first dedicated in-house patent attorney, you will take ownership of the company’s growing intellectual property portfolio, moving beyond management to active creation. This role will own patent strategy end-to-end: you will use AI to draft patent applications in-house, drive invention harvesting across the organization, and work closely with outside counsel to secure granted patents. This is a high-impact role for someone who wants to build the internal IP infrastructure for a market-leading digital health company, working directly with advanced AI tools, engineers, product managers, and clinical experts to align the IP strategy with the product roadmap which includes AI-driven care, computer vision, wearable technology and broader aspects of care automation.
Manage the IP Portfolio: Oversee the end-to-end lifecycle of the company’s global patent and trademark portfolio. Develop and execute the company’s IP strategy in alignment with business objectives and product roadmap.
Adopt AI-first mindset and workflows: Leverage AI-powered tools to perform prior art search and prepare initial patent application drafts, to enable faster identification of relevant references and more strategic claim drafting from the outset, significantly reducing turnaround time from invention disclosure to filing.
Drive Invention Harvesting: Partner deeply with R&D, Product, and Clinical teams to identify patentable innovation early. Lead "idea jam" sessions and manage the internal Idea Disclosure Form process to ensure a steady pipeline of high-quality filings.
Facilitate the Invention Review Process: Organize and lead monthly invention review meetings to review IDFs, determine filing strategies, and recognize inventor contributions through the Patent Award Program.
Draft & Prosecute Patent Applications: Serve as the primary drafter for new patent applications, particularly in key technology areas. Respond to office actions and manage prosecution to maximize claim scope and grant rate.
Facilitate Adoption and Improvement of AI tools: Drive efficiency improvements across the patent lifecycle — from drafting through prosecution and portfolio management — by identifying opportunities to deploy AI; continuously refine and optimize AI prompts and workflows to improve the quality and consistency of generated patent documents, while applying legal expertise to review, edit, and finalize all AI-assisted outputs.
Manage Outside Counsel: Act as the primary liaison with outside IP counsel. Direct their work on foreign filings and complex prosecution matters, ensuring strategic alignment, high-quality work product and strict adherence to budget and timelines.
Strategic Counseling: Provide patent landscape reviews, patentability analyses, and competitor monitoring to inform product development and business strategy.
Support IP due diligence for potential M&A activities. Support product and business development teams with IP due diligence for partnerships, licensing, and strategic transactions.
Stakeholder Support: Develop and deliver internal training on IP awareness, invention disclosure processes, and trade secret protection. Advise internal stakeholders on IP ownership, inventorship, and related contractual matters (e.g., IP assignment provisions in employment and vendor agreements).
J.D. from an accredited law school with strong academic credentials and active membership in good standing with at least one U.S. state bar
Registered to practice before the U.S. Patent and Trademark Office (USPTO)
5-7 years of experience drafting and prosecuting patent applications, with a strong preference for a mix of law firm and in-house experience.
Strong technical fluency in computer science, electrical engineering, data science, or a related field, with the ability to understand complex software, AI/ML, and hardware technologies
Experience managing outside counsel relationships and patent prosecution budgets
Familiarity with international patent prosecution (PCT, EP, and key foreign jurisdictions)
Experience using AI tools to enhance and accelerate deliverables
Experience building or scaling an IP portfolio at a technology, healthcare, or med device/SaMD company, including inventor incentive programs and portfolio management
Experience with IP due diligence in M&A or strategic partnership contexts
Excellent communication skills; ability to explain complex legal and IP concepts to non-legal stakeholders (engineers, product managers, executives) in a clear and practical way
Strategic mindset and ability to translate business goals into a comprehensive IP strategy that balances offensive and defensive needs
The role offers a competitive compensation package, including a base salary range of $216,000 – $324,000, together with eligibility for equity participation. The company also offers comprehensive benefits, including retirement plans with company match, modern life stipends, and support for family and wellness needs. Total compensation is designed to align with the scope and impact of the position.
Solutus Legal Search is proud to have been exclusively retained to assist our client with this special engagement. Resumes submitted directly to our client will be forwarded to Solutus Legal for evaluation.
Ref. #970-SLS
Upstart
OkloRemote