Patent Counsel

7 days ago

Global Ontario Any Canada WiLAN Full time

JOB TITLE Patent Counsel 

REPORTS TO Licensing Business Unit Leader

KEY WORKING RELATIONSHIPS    

Internal: Licensing Teams; Business Development; Legal Counsel; Litigation Services; President & CEO.
External: External Technical Consultants, Patent Attorneys, Litigation Attorneys.

POSITION SUMMARY    A seasoned patent professional who takes ownership in providing legal support for licensing, litigation, and prosecution of existing patent portfolios, as well as due diligence in the acquisition of new patent portfolios.

KEY RESPONSIBILITIES    


•    Conduct legal analysis and work with internal and external technology experts to create infringement analysis materials with respect to prospective licensee products.

•    Participate in licensing meetings to provide legal support in asserting and defending patents.

•    Provide input and manage external counsel on key patent matters such as infringement contentions, invalidity responses, claim construction positions and summary judgment, trial, or appellate level motions and briefs.

•    Prosecute and manage one or more of the Company's growing patent portfolios.  

•    Guide patent prosecution activities which include interactions with internal team members and 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.

•    Perform pre-transaction patent due diligence including title check, prosecution history review, prior art searches and infringement analysis review.  

SKILLS AND QUALIFICATIONS    


•    Bachelor's Degree in Engineering or Computer Science

•    Law degree focused on Patent Law

•    Registered United States Patent Attorney

•    7+ years of demonstrated professional experience in a corporate legal department or a law firm environment with a focus on U.S. patent preparation and prosecution, U.S. patent licensing and/or U.S. patent litigation

•    Experience in asserting patents in non-U.S. jurisdictions

•    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, software, telecommunication, medical 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 Patent Center, 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

WiLAN is committed to treating all people in a way that allows them to maintain their dignity and independence. We believe in integration and equal opportunity. Accommodations are available upon request for all applicants with a disability throughout the recruitment process. Please contact Human Resources if you require accommodation. We will work with all applicants to accommodate their individual accessibility needs.

We use automated tools, including artificial intelligence, to support aspects of our candidate screening process.

All hiring decisions are made by humans, and we are committed to fair, equitable, and compliant hiring practices.

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