The successful candidate will be a seasoned patent professional who will take ownership of existing and new patent portfolios, providing legal support for prosecution, licensing, due diligence and litigation.
Patent Prosecution and Portfolio Management
Prosecute and manage one or more of the Company’s growing patent portfolios. Guide patent prosecution activities which will include interaction with internal team members and interaction with external counsel with respect to the filing of new, continuation, divisional and/or foreign applications and responses to office actions and other ongoing prosecution tasks.
Patent Licensing and Litigation Support
Conduct legal analysis and work with internal and external technology experts to create infringement analysis materials with respect to prospective licensee products. Provide input to Litigation Team on key patent matters such as infringement contentions, invalidity responses, claim construction positions and summary judgment, trial or appellate level motions and briefs.
Due Diligence on Portfolios for Acquisitions or Licensing Partnerships
Perform pre-transaction patent due diligence including title check, prosecution history review, prior art searches and infringement analysis review. Efficiently and accurately integrate acquired portfolios into Company’s overall patent holdings.
ESSENTIAL SKILLS AND QUALIFICATIONS
• Law Degree (USA law degree preferred)
• Registered Patent Attorney (USA preferred)
• Minimum 10 years demonstrated professional experience in a corporate legal department or law firm with a focus on U.S. patent preparation and prosecution, U.S. patent licensing and/or U.S. patent litigation
• Excellent oral and written advocacy skills
• Solid understanding of the interaction between patent prosecution, licensing and litigation.
• Sound technical competence in one or more technology areas.
• Self-motivated, organized, resourceful, and excellent cross functional team working skills.
• Ability to travel at least 20% per month.
• Computer skills including Microsoft Office, USPTO PAIR, and effective web based research.
• Ability to work in a fast-paced environment, to maintain a high quality work product, and to work closely with other teams to deliver key organizational objectives.
The company’s preference is Ottawa, Ontario, Canada however consideration will also be given to work out of the Company’s offices in San Diego, California and Orange County, California.