The Senior Counsel, IP Law focus primarily on the company’s patent litigation and pre-litigation matters. Reporting to the Senior Director responsible for patent litigation, this position requires an individual with substantial law firm experience litigating patent disputes and familiarity with the technology manufacturing industry. This IP attorney will also support the drafting and negotiation of technology-related transaction agreements such as technology development agreements, technology in-licenses and out-licenses, and U.S. government contracts. At least five years of prior experience negotiating with third party patent owners to resolve litigation and pre-litigation assertions; and work in close collaboration with members of the company’s engineering, finance, sales, and market analysis teams in collecting and analyzing information relevant to such assertions. This attorney will also provide intellectual property law support to the company’s Strategic Agreements and Alliances (“SAA”) group on technology contracts. Qualified candidates will have a minimum of 5 years of top-tier law-firm based patent litigation experience and/or experience with the I.P. aspects of commercial transactions and with IP transactions. This position can be located in Austin, Houston, or New York.
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Responsibilities:
- Lead and manage patent litigation and pre-litigation matters, ensuring the protection of the company’s intellectual property rights and interests.
- Actively participate in the drafting and negotiation of technology-related transaction agreements, including technology development contracts, in-licenses, out-licenses, and contracts with the U.S. government.
- Engage in negotiations with third-party patent owners to settle litigation and pre-litigation assertions effectively.
- Collaborate seamlessly with the company’s engineering, finance, sales, and market analysis teams, gathering and analyzing information pertinent to litigation and pre-litigation assertions.
- Provide intellectual property legal support to the Strategic Agreements and Alliances (SAA) group, aiding in the formulation and review of technology contracts.
Keep abreast of relevant legal developments and trends in intellectual property and patent law, ensuring compliance and strategic alignment in all legal actions and decisions.
Qualifications:
- Juris Doctor (J.D.) degree from an accredited law school.
- A minimum of 5 years of robust experience in patent litigation, preferably acquired in a top-tier law firm.
- Proven track record of negotiating with third-party patent owners to resolve litigation and pre-litigation matters.
- In-depth experience with the intellectual property aspects of commercial transactions and IP transactions.
- Proficiency in technology-related transaction agreement drafting and negotiation.
- Familiarity with the technology manufacturing industry is a must.
- Exceptional analytical, negotiation, and communication skills.
- Ability to work collaboratively with cross-functional teams, providing legal guidance and support that aligns with the company’s strategic objectives.
- Bar Admission in the state of employment (Texas or New York) or eligibility for admission.
- Ability to travel as needed for litigation matters.