Hybrid Patent Counsel

at WiLAN

• Job title: Patent Counsel
• Job type: Full Time
• Experience level: Senior, Lead
• Salary: Not specified
• Degree requirement: Bachelor's Degree
• Location requirements: Hybrid, Ontario, Canada

About the role

• Patent Counsel providing legal support in licensing and litigation for patent portfolios. Collaborating with internal teams and external counsel to manage patent prosecution and due diligence.

Responsibilities

• 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.