Terabase Energy→
Senior Counsel, Intellectual Property at Terabase Energy · Berkeley
Skills
Job Description
What we do
At Terabase Energy, we believe that digitalization and automation will drive the next wave of innovation and cost reduction in large scale solar. To fully unlock the potential of this opportunity, Terabase is developing an interconnected software and construction automation platform. We work alongside project developers, owners, and engineering & construction firms to support the design, optimization, and construction of huge solar projects around the world. Our team is a blend of solar-industry veterans and newbies, thought-leaders, dreamers, software, electrical and mechanical engineers, coders, product managers, project managers, and sales and marketing professionals. We are based in Northern California, with several other offices in the United States and around the world. If all of this piques your interest, we’d love to hear from you!
The Role
Terabase is seeking a Senior Intellectual Property Counsel to build and lead our IP program. This is Terabase’s first dedicated IP role. Reporting to the VP of Legal, you will own IP strategy and day-to-day IP legal support across our product lines, including PlantPredict, Construct, SCADA, and Terafab, which together span AI-enabled SaaS, controls hardware, and physical AI and robotics-enabled construction. You will be shaping IP strategy at the frontier of physical AI, where machine learning, robotics, and automation meet the real world at utility scale.
The work is broad. You will partner with engineering to capture and protect inventions across AI, robotics, and automation, manage our patent portfolio and outside IP counsel, and help product teams understand third-party patent risk early enough to act on it. You will own our NDA program, from playbook to self-service tools, and partner with IT on the policies that protect company information. You will also stand up practical IP and AI policies, run IP training across the company, support IP terms in commercial deals and special projects, and own IP disputes and litigation, from cease-and-desist letters through selecting counsel and responding to claims.
We are looking for a builder. The ideal candidate has supported start-ups or scale-ups and does their best work in uncertain, constantly changing environments, where priorities shift, information is incomplete, and the playbook often does not exist yet. You have built IP programs and processes from the ground up, not just operated them, and you can bring structure without slowing the business down.
You are a practical, technically fluent IP lawyer who is equally comfortable reviewing claims with engineers and briefing executives, and you know when a two-page risk memo serves the business better than a forty-page opinion. You are comfortable as a team of one, working closely with a lean legal team and a strong bench of outside counsel.
This role is hybrid, based in the Capitol Corridor (CA), with regular travel to Terabase offices in Davis and Woodland, CA (approximately 25%).
Responsibilities
IP Strategy, Patent Portfolio, and Outside Counsel
- Develop and execute a patent strategy aligned with the product roadmap and business priorities, focusing filings where they create real competitive value, including in AI, machine learning, and physical AI systems.
- Lead invention harvesting by working directly with engineers to identify, evaluate, and prioritize inventions, and run a lightweight invention review process.
- Direct outside prosecution counsel on drafting, filing, prosecution, and foreign filing decisions, and review applications and office action responses for quality, claim scope, and alignment with our products.
- Manage and build on our existing outside IP counsel relationships, and develop a forward-looking outside counsel plan that matches the right firms and specialists to our needs as our portfolio, product lines, and geographic footprint grow.
- Manage the patent portfolio, docket, and IP budget, including maintenance and pruning decisions.
- Help the business decide when to protect technology, including AI models, training data, and robotics know-how, through patents and when to protect it as a trade secret.
Freedom-to-Operate, Enforcement, and IP Litigation
- Identify and manage third-party patent risk for new products and features, including AI and robotics capabilities, and scope and direct landscape, freedom-to-operate, and validity analyses with outside counsel.
- Translate technical and legal analysis into clear, decision-ready recommendations for engineering and executive leadership.
- Build IP risk checkpoints into product development so that issues surface early, while design choices are still flexible.
- Own IP disputes and litigation for Terabase from first assessment through resolution, including infringement allegations, trademark conflicts, and other IP claims.
- Send and respond to cease-and-desist and demand letters, and recommend enforcement, licensing, and settlement strategies.
- Select, engage, and manage litigation counsel, and direct case strategy, budget, and staffing in partnership with the VP of Legal.
- Lead Terabase’s response to IP litigation and administrative proceedings, such as inter partes review, including early case assessment, litigation holds, and coordination with insurers where applicable.
- Monitor competitor patent activity and IP developments relevant to Terabase’s markets.
IP Policies, Training, and Trademarks
Build and maintain core IP policies and processes, including invention disclosure and assignment, trade secret protection, and open source software use.
Strengthen IP ownership foundations, including employee and contractor invention assignment agreements and related onboarding and offboarding practices.
Design and run internal IP training programs, including onboarding sessions, engineering-focused training on invention disclosure and patent risk, and company-wide training on confidentiality, trade secrets, open source, and responsible AI use.
Manage the trademark portfolio, including clearance, filing, maintenance, watch, and brand-use guidance.
NDAs and Information Protection
Own Terabase’s NDA program, including negotiating NDAs and serving as the escalation point for non-standard terms.
Maintain the NDA playbook, including standard positions, acceptable fallbacks, and approval thresholds.
Put the playbook into practice using AI-assisted review tools, so business teams can self-serve routine NDAs with clear guardrails and escalation paths.
Partner with IT to develop and maintain company information security and confidential information policies, including information classification, handling of third-party confidential information, and alignment with our contractual confidentiality commitments.
AI Policy, Special Projects, and Transactional IP Support
Lead and support Terabase’s AI policies and governance, including acceptable use of AI tools, protection of confidential information and IP in AI workflows, ownership of AI-generated output, and IP and data-rights questions raised by AI products, physical AI and robotics systems, and AI vendors.
Support special projects with an IP angle, such as new product launches, partnerships, new market entry, and other strategic initiatives.
Support IP-centric agreements, including joint development, license, technology, data, and collaboration agreements.
Partner with commercial counsel on IP ownership, licensing, data rights, and IP indemnity terms in customer, supplier, and partner agreements.
Support IP diligence and the IP aspects of financings, partnerships, and strategic transactions.
Must-Have Qualifications
JD and active license to practice law in at least one U.S. jurisdiction, with eligibility to practice in California (including as Registered In-House Counsel).
8+ years of intellectual property legal experience, ideally a combination of law firm and in-house practice.
Substantial patent experience, such as prosecution, portfolio management, or patent counseling, with the ability to read and evaluate claims critically.
Experience scoping and managing freedom-to-operate, landscape, or validity work and turning the results into business decisions.
Experience selecting and directing outside counsel effectively, including scope, quality, and budget.
Experience managing IP disputes or litigation, including sending and responding to demand letters, selecting and directing litigation counsel, and shaping case strategy.
Experience negotiating NDAs and IP-related agreements and setting standard positions or playbooks.
Working knowledge of trademarks, trade secrets, copyright, and open source licensing.
Technical fluency sufficient to engage credibly with electrical, mechanical, controls, software, and AI and robotics engineers.
Hands-on experience using AI tools in your own legal work, such as research, drafting, contract review, and patent and prior art analysis, with the judgment to verify outputs, protect privileged and confidential information, and know where AI adds value and where it does not.
Strong business judgment and the ability to distinguish legal risk from commercial risk and give clear recommendations.
Clear, plain-English communication, including experience designing and delivering training for technical and non-technical audiences.
Experience supporting start-ups or scale-ups, with a track record of building programs, processes, or functions from the ground up.
Comfort operating in uncertain, constantly changing environments, including setting priorities, making sound judgment calls with incomplete information, and adjusting as the business evolves.
Nice-to-Have Qualifications
Registration to practice before the USPTO.
Degree in electrical, mechanical, or mechatronics engineering, computer science, physics, or a related technical field.
In-house experience at a growth-stage AI, physical AI, hardware, robotics, energy, cleantech, or industrial technology company.
Experience with solar, energy, construction, automation, controls/SCADA, AI, machine learning, physical AI, or robotics technologies.
Experience building IP program elements such as invention disclosure processes, patent review committees, inventor recognition programs, or IP training curricula.
Experience developing AI policies or AI governance, or advising on AI-related IP issues such as training data and AI-generated content.
Experience protecting AI and physical AI innovations, including patenting machine learning, computer vision, and robotics inventions and protecting models and datasets as trade secrets.
Experience with Ironclad or another CLM platform, or with configuring AI-assisted contract review or self-service workflows.
Experience working with IT or security teams on information security, data classification, or confidentiality programs.
Compensation And Benefits
Our salary ranges are determined by role, level, and location.
The salary for this role will range between $205,000 - $250,000 annually.
Within each posted range, individual pay is determined (and may be higher) depending on work location and additional factors, including job-related skills, experience, and relevant education or training. Terabase offers competitive compensation along with a comprehensive benefits package, including:
• Generous time off and holiday policy
• Remote flexibility
• Flexible time off
• Comprehensive benefits package
• Career progression
• 401k match
• Stock options
• Home office set up allowance
• And much more!
Terabase is an equal opportunity employer. We recruit, hire, employ, train, promote, and compensate individuals based on job-related qualifications and abilities. We strongly encourage people of all backgrounds to apply.
We do not discriminate for any reason including race, color, sex, gender, age, religion or religious creed, national origin, ancestry, citizenship, marital status, sexual orientation, gender identity, gender expression, genetic information, physical or mental disability, military/ veteran status, or any other characteristic protected by law.
We offer a welcoming and inclusive environment in service to one another, our products, the diverse consumers we represent, and the communities we call home.
Principles only. This role is not open to receiving agency candidates, and any contingent submissions will not be considered. Terabase Energy does not utilize third-party recruitment agencies. Please contact our Recruiting team at careers@terabase.energy with any staffing-related inquiries.