Patent Counsel – Small Corporation – Remote, U.S.

WiLAN Technologies, a small corporation, is seeking a Patent Counsel to work remotely

Key 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.

Skills and Qualifications:

  • Law Degree from an accredited United States law school.
  • Bachelor’s Degree in Engineering.
  • Graduate Degree in Law focused on Patent Law (preferred).
  • Member of the bar of at least one U.S. state.
  • 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.
  • 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, telecommunication, 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

Apply online at:

Additional Info
Employer Type: Small Corporation
Job Location: Remote, U.S.