Job Details

Senior Managing Counsel IP Transactions and Disputes

Company name

Xerox Corporation

Organization Type


Job Type


Date Last Verified

Jun 22,2019

Valid Through

Oct 05,2019

Posted on

May 06,2019

Years of Experience

Min 8 yrs required


Palo Alto, CA, United States

Employment Type



Practice Area
Intellectual Property >> Intellectual Property - Litigation >> Intellectual Property - Litigation - Hard Sciences >> Intellectual Property - Litigation - Hard Sciences General
Intellectual Property >> Intellectual Property - Litigation >> Intellectual Property - Litigation - Hard Sciences >> Physics
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Senior Managing Counsel, IP Transactions and Disputes
Duties: The candidate will be responsible for handling a variety of intellectual property legal projects for the organization. Assignments are typically within the area(s) of legal expertise, specifically, laws and regulations governing patents and trade secrets, as well as other IP laws and regulations. Duties span performing legal research, collecting and reviewing information and data, interviewing witnesses, managing staff, overseeing ongoing litigation, counseling stakeholders and preparing recommendations and/or documents to support the organization. May work with or oversee outside counsel to complete assignments. Collaborating with IPLD leadership and key R&D and corporate stakeholders to imagine, structure and implement best-in-class IP strategies. Crafting and execution of strategies for achieving successful outcomes, consistent with corporate objectives, for all patent litigation, threats and assertions. Leading internal litigation support teams; overseeing and providing strategic direction to outside counsel. Implementing creative strategies to reduce litigation costs; preparing, reviewing and monitoring of litigation budgets and invoices. Overseeing IP licensing function and partnering with key stakeholders to negotiate and draft inbound and outbound patent licenses and IP sales and purchase agreements. Leading IP due diligence efforts, including support for M&A transactions and patent clearance activities. Developing and supporting corporate intellectual property management policies and processes. Finding new and creative ways to raise the bar and improve collaboration with teammates and stakeholders.

Qualification and Experience

Qualifications: The candidate should have a J.D. degree with strong academic credentials and admission to Bar, or qualification for registration as in-house counsel, in New York, California or Connecticut. Technical undergraduate degree in engineering, physics or similar field and admission to the USPTO is preferred. Must have 8+ years of IP experience at a top-tier law firm or in a corporate legal department, with a substantial amount of that time dedicated to patent litigation. Substantial experience negotiating and drafting intellectual property agreements, including settlement agreements, cross-licenses, and patent purchase or sale agreements is required. Ability to convey and discuss intellectual property concepts in well-reasoned, understandable terms and to establish, manage and leverage relationships with internal and external partners is needed. Trial experience and experience with Inter Partes Review proceedings is strongly preferred.

Additional info

Job Number: 19001971

Company info

Hiring Coordinator
Xerox Corporation
45 Glover Avenue
Norwalk, CT 06856

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