Patent Monetization Specialist

Our client, a Fortune 500 technology company, has exclusively retained Solutus Legal Search to find a seasoned professional to assist the Company in building out a program/function to license and otherwise monetize its highly valuable portfolio of U.S. and international patent assets.

This is opportunity has a targeted objective: develop a world-class IP monetization function that becomes a well-oiled machine. The executives envision this as an 18-to-24-month engagement with the Company, and they are open to considering several types of employment/compensation arrangements for the right candidate.

The successful candidate will report directly to the Executive VP & Chief Legal Officer and will work closely with the Deputy GC & Chief IP Counsel and other key members of the Legal Team.  The role may be based anywhere in the U.S.  Regular travel to Company headquarters is required (based in the US west).

Responsibilities:

• Develop a strong working knowledge of the Company’s broad patent portfolio as well as its technologies and products.
• Analyze and assess the relevant industry ecosystems and sectors to establish licensing priorities and the best path(s) to maximize licensing and/or sales revenues.
• Work collaboratively with the Legal and Engineering teams to create sophisticated monetization strategies, programs, and pricing.
• Create methodologies to identify and qualify potential licensees.
• Develop negotiation tactics and approaches appropriate for the nature and geographical location of the potential licensees.
• Draft and evaluate claim charts and other collateral for presentation to potential licensees.
• Assist in developing contacts and relationships with counterparts in the relevant industries and sectors.
• Consult and advise on license agreement templates and significant licensing terms.

The ideal candidate will possess:

• 15+ years of experience in patent licensing and sales and developing and executing monetization programs.
• Experience with a broad array of semiconductor technologies, the semiconductor industry, and the various markets for semiconductor devices.
• A strong understanding of the U.S. and international patent systems.
• Up-to-date knowledge of global patent licensing and enforcement trends and strategies, especially AIA trials and post-grant proceedings.
• Experience conducting negotiations in Asia and in Europe.
• A network of contacts within the relevant industries and industry sectors.
• An undergraduate degree in a related field of technology is an advantage.
• A law degree is preferred but not required.
• Excellent communication skills, written and verbal, with the ability to clearly communicate within the organization as well as with outside parties.
• Ability to analyze and interpret complex licensing agreements and other legal documents and terms.
• Ability to work independently with a high degree of accountability.
• Ability to work collaboratively with multiple stakeholders.
• Unquestionable ethics, integrity, and business judgment.

This a unique opportunity to help a best-in-class technology company make the most of a rich and diverse portfolio of global patent assets.

Solutus Legal Search has been exclusively retained for this highly desirable search. Interested candidates may submit resumes to search@solutuslegal.com. Resumes submitted directly to our client will be forwarded to Solutus for evaluation.

Ref. #820-SLS