Patent Counsel
WiLAN
full-time
Posted on:
Location Type: Hybrid
Location: Ontario • Canada
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About the role
- 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.
Requirements
- 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.
Benefits
- Accommodations are available upon request for all applicants with a disability throughout the recruitment process.
Applicant Tracking System Keywords
Tip: use these terms in your resume and cover letter to boost ATS matches.
Hard Skills & Tools
patent preparationpatent prosecutionpatent licensingpatent litigationinfringement analysisprior art searchesclaim constructionfederal civil proceduredue diligencetechnical competence
Soft Skills
oral advocacywritten advocacyself-motivatedorganizedresourcefulcross functional team workingability to work in fast-paced environmenthigh-quality work productcommunication skillsproblem-solving
Certifications
Bachelor’s Degree in EngineeringBachelor’s Degree in Computer ScienceLaw degree focused on Patent LawRegistered United States Patent Attorney