Senior Patent Counsel

Job Description:

RESPONSIBILITIES:

• 
  Work with licensing lead to develop and execute assertion strategy and achieve business goals.
• 
  Provide legal support to technical team doing technical analysis, reverse engineering and preparing claim charts.
• 
  Participate in licensing meetings lead by Licensing Lead and present claim charts, non-infringement and invalidity responses to the targets.

• 
  Participate in developing litigation strategy.
• 
  Work closely with licensing lead and outside litigation counsel to execute litigation strategy.
• 
  Work closely with the team to review, provide input and/or respond to legal documents/matters as appropriate from outside litigation counsel (complaints, interrogatories, depositions, infringement contentions, invalidity contentions)
• 
  Provide legal support to technical team doing technical Rule 11 analysis and preparing infringement contentions (claim interpretation, infringement reads, etc..).
• 
  Review file wrappers, claim charts, infringement contentions in conjunction with the Licensing Lead, technical team and outside litigation counsel.
• 
  Review and provide input to POPRs and PORs prepared by outside counsel.

• 
  Negotiate and draft NDAs.
• 
  Draft license agreements to address complex legal concepts.
• 
  Third party engagement agreements (e.g. MSA, CSA, Contractor Agreements)

• 
  Manage and work closely with outside prosecution counsel, the internal technical team, and in-house patent agents on patent prosecution (continuations, re-exams, re-issues)
• 
  Work with outside counsel to develop a strategy and address issues related to IPRs

• 
  Review patent file wrappers as appropriate
• 
  Provide legal support to technical team to interpret patent claims

KEY SKILLS AND EXPERIENCE:

• 
  7 - 10 years of experience in patent prosecution, patent litigation, patent licenses, and contract drafting.
• 
  J.D. or equivalent required.
• 
  Undergraduate degree in Electrical Engineering, Computer Science, or Physics/Mathematics.
• 
  Must be able to multitask across multiple engagements and handle several legal matters concurrently.
• 
  Demonstrate strategic thinking and a broad legal perspective.
• 
  Think and act creatively to develop and apply new innovative approaches to complex problems.
• 
  Able to work with high degree of independence.
• 
  Willingness to travel and to work under pressure.
• 
  Communication skills, excellent command of written and spoken English.