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, ensuring proper maintenance fee payments are continued, assignment records are properly maintained and patents are accurately categorized in appropriate technology categories.
Study and analyze scientific/technical/patent documents to assess innovation
Write detailed descriptions of inventions in precise legal terms (patent application drafts), which will form the basis for patent to be granted
Provide analyses of new technology and its relation to Intellectual Property Rights
Provide financial projections of patent filing and maintenance records
Participate in licensing and patent negotiations
ESSENTIAL SKILLS AND QUALIFICATIONS
• Law Degree from an accredited United States law school
• Bachelor’s Degree in Engineering
• Graduate Degree in Law focused on Patent Law
• Member of the bar of at least one U.S state
• Member of the Law Society of Upper Canada
• Registered United States Patent Attorney
• Minimum 15 years demonstrated professional experience in a corporate legal department (3 years minimum) and law firm environment (5 years minimum) 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
• Expert knowledge of federal civil procedure and experience in federal courts
• Solid understanding of the interaction between patent prosecution, licensing and litigation.
• Sound technical competence in one or more technology areas including semiconductors, telecommunication and consumers electronics technology.
• 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.
This is a fulltime permanent role with a wage range of CAD150,000 to CAD205,000 plus potential eligibility for bonus and includes a full range of benefits including health and dental.
The location for this position is WiLAN’s located at 303 Terry Fox Drive, Ottawa, Ontario K2K 3J1, Canada.