Senior Portfolio Management Counsel

Min 10 yrs required

Full-time

No

Senior Portfolio Management Counsel
Responsibilities: Review invention disclosures, make filing decisions and manage the work of internal and external prosecution counsel to best achieve the desired portfolio strategy within budget. Attain in-depth knowledge of select patent families and propose claim sets, amendments, continuation/divisional strategies, and other prosecution actions to support strategic objectives. Actively participate in portfolio management meetings with engineers, prosecution counsel and members of the Patents team. Work closely with the Licensing Support team to ensure that relevant patents are prosecuted in a manner that is aligned with the company’s licensing programs or other corporate initiatives. Coordinate with, and provide feedback to, company engineers and engineering management on patent-related topics. Track status of assigned portfolio(s) and provide updates to company stakeholders, such as the Head of Portfolio Strategy, the General Patent Counsel, and company management. Support the Litigation team during litigation due diligence and other litigation-related matters. Coordinate the defense of patents in response to third-party validity challenges. Work collaboratively within, and outside of, the Patents team on a variety of patent-related projects. Handle additional responsibilities within the Portfolio Strategy team, which may include SDO policy review and compliance, coordination with joint venture partners, portfolio acquisition due diligence, and/or portfolio sale efforts.

Requisition ID: 1637

Qualification and Experience Qualifications: JD Degree from an accredited law school and membership in good standing from at least one state Bar. Registration to practice before the USPTO. 10+ years of experience as a patent attorney with a combination of law firm and in-house experience in patent prosecution and portfolio management. Experience managing legal staff or attorneys, and/or supervising the work of attorneys, is preferred. For Europe-based candidates: Qualified to practice before the EPO and the National Patent Office of at least one EP member state. BS or higher degree in Electrical Engineering, Physics, Electronics, Telecommunications, or a related technology area relevant to business concerns. Previous experience in the fields of wireless communications, consumer electronics or video compression is a plus. An aptitude for learning new and complex technology, and an ability to communicate at all levels of the organization using a variety of communication methods and with a global mindset. Experience with patent databases and workflow-driven IP asset management software preferred. Willingness to travel, including internationally.

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