SRI International’s intellectual property department provides key leadership and support for the identification, protection and licensing of cutting edge innovations across a wide number of scientific and engineering disciplines. The successful candidate will be responsible for intellectual property strategy and counseling in support of SRI’s fast growing commercial and government business in Information Technology and related areas. Position will report to the Vice-President of Legal and Business Affairs and General Counsel.
Responsibilities:
Patent Portfolio Development
• Collaborate with SRI management, business development, and technical teams to build value propositions for technologies, and lead the development of supporting intellectual property strategies and portfolios
• Identify opportunities and execute strategies for monetization of patent assets
• Actively identify areas for portfolio growth and stimulate generation of ideas and associated invention disclosures
• Lead an intellectual property review committee in making business-aligned strategy and investment decisions
• Conduct training seminars for SRI staff in intellectual property matters
• Select and supervise outside patent prosecution counsel
• Critically review patent applications and office actions for alignment with technical, business, and IP strategies
• In appropriate cases, draft provisional patent applications from technical papers
Intellectual Property Transactions
• Assist business development staff in defining licensing strategies, including development of field-of-use definitions
• Assist SRI’s legal counsel and contract administrators in drafting, negotiating, and reviewing license and other agreements
• Assist inventors, business development and marketing staff with intellectual property issues in technical, business, and marketing materials and press releases
• Lead the development of intellectual property-related sections of proposals, including collating information from other team members when SRI is prime contractor / systems integrator
Intellectual Property Investigations and Disputes
• Support SRI’s legal counsel with response to demand letters, subpoenas, and other enforcement matters
• Educate staff about issues with 3rd party patents and best practices for avoidance of litigation
Education:
• Registered to practice before the US Patent & Trademark Office (Agent or Attorney)
• MUST HAVE a MS or PhD in Computer Science
Experience:
The successful candidate will typically have at least 5 years of experience in IP portfolio development in relevant technical fields, and business-focused experience in technology and IP evaluation and licensing. A quick study, the candidate will have a demonstrated record of rapidly getting up to speed on a diverse body of technologies and business opportunities. The candidate must be a strategic thinker, with self-confidence and judgment, demonstrating a strong combination of analytical and communication skills. Experience with Government funding regulations relating to patents (Bayh-Dole Act), and rights in software and data (FAR and DFARS) a plus.
Contact:
Apply via our web page at: https://sri.ats.hrsmart.com/
SRI is an equal opportunity employer.
Additional Info:
Employer Type: Other
Job Location: Menlo Park, California