Intellectual Property Counsel

Expertise:

Location:

Expertise:

Location:

IP Litigation,IP/Patent,Patent Prosecution

Research Triangle Park, NC (preferred) or San Jose, CA or certain other locations

IP Litigation,IP/Patent,Patent Prosecution

Research Triangle Park, NC (preferred) or San Jose, CA or certain other locations

Our client is a cloud-led data-centric software company and multi-billion dollar technology leader. They are adding an IP attorney to their award-winning legal department. The successful candidate will support the company’s IP functions, which will include managing IP litigation, building a strategic patent portfolio, and advising on IP-related matters, as the company develops its next generation technology. This attorney will work closely with outside attorneys, other members of the legal department, and the company’s technical and business organizations. This position is preferably based in Research Triangle Park, North Carolina, but they also will consider other locations near or at a Company office site.

This attorney will have at least 7 years of experience in IP litigation and patent prosecution in software technologies. An undergraduate degree in electrical engineering, computer science, physics, or similar field with ability to learn company’s technology is required. USPTO membership is required as well.

Responsibilities Include:

  • Managing IP litigation and disputes, developing and executing litigation strategy, independently supporting and managing all discovery efforts.
  • Hands-on involvement in witness identification and selection, deposition preparations, drafting of briefs, reviewing caselaw, conduct infringement/non-infringement and validity/invalidity analyses, trial, appeal, and overall litigation direction.
  • Evaluate IP claims and disputes, identify claims or defenses, including prior art analysis, claim charts, etc.
  • Managing inter partes review petitions and ex parte re-examination proceedings; working closely with outside counsel on prior art, brief preparations, etc.
  • Draft, review, and negotiate settlement agreements.
  • Working closely with engineering teams to identify and harvest strategic inventions, managing outside counsel in the filing of new patent applications before the USPTO and in prosecuting active patent cases.
  • Analyze patent portfolio, identify valuable patent assets, and coverage in portfolio.
  • Implementing and help defining the company’s patent portfolio and strategy to firmly align with the Company’s business priorities.
  • IP due diligence in M&A deals.
  • Assist in other substantive legal areas and work with other attorneys.

The following qualifications are required:

  • BS in Electrical Engineering, Computer Science, Physics, or similar field with ability to learn company’s technology is required.
  • JD with at least one state bar membership (North Carolina or California preferred).
  • USPTO registration.
  • Have at least 7 years of experience in litigation with focus on patent litigation and must possess in-depth knowledge of US patent and intellectual property law.
  • Experience in all phases of a patent litigation, strong familiarity on law and motion practices especially in federal courts.

The successful candidate will have the confidence, smarts, and creativity to drive strategy as well as the scrappiness to roll up their sleeves and get the work done. This is a rare opportunity for a seasoned litigator to join an outstanding team and have an immediate impact. Our client offers competitive compensation, including equity, and comprehensive benefits.

Solutus has been selected as the exclusive representative on this desirable search.  Interested candidates, please submit resumes to search@solutuslegal.com for consideration. Resumes submitted directly to our client will be forwarded to Solutus for review and evaluation.

Ref. #678-SLS

 

 

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