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Summary

POSITION SUMMARY
Reporting to the Business Team Leader & Senior Counsel, the Patent Counsel role is responsible for working with both internal and external personnel on all phases of patent licensing and assertion, including intake analysis, client negotiation and negotiation of counsel retainer agreements, due diligence, patent prosecution (including matters before the PTAB), litigation, negotiation, and licensing.  

KEY RESPONSIBILITIES
• Advise on patent law matters; 
• Participate, where required, licensing and patent negotiations;
• Proactively manage prosecution and continuation practice in support of litigation and licensing programs;
• Prepare claim charts to document infringement;
• Support licensing negotiations by providing advice in response to substantive patent questions such as claim construction, infringement and validity;
• Support business development team in performing due diligence on patent opportunities

ESSENTIAL SKILLS AND QUALIFICATIONS
• Degree from an accredited law school; • Patent Attorney - Registered Patent Agent (U.S. credentials a must);
• Minimum 5 years demonstrated professional experience in a corporate legal dept. or law firm with a focus on patent prosecution, licensing and/or litigation;
• At least 10 years patent prosecution experience;
• Admission to practice before the USPTO;
• Knowledge of federal civil procedure and experience in federal courts;
• Understanding of basic business practices, principles, and accounting;
• Solid knowledge of substantive patent law, including the law of damages and the law of licensing;
• Ability to get along well with others;
• Ability to manage outside counsel;
• Solid negotiation and contract drafting skills;
• Outstanding research and organizational skills;
• Outstanding oral, written and presentation communication skills;
• Willingness to travel as needed;
• Position located in Stamford, CT preferred, will consider Ottawa, ON.



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