Hilco Global
Senior Patent Counsel
Hilco Global, Chicago, Illinois, United States, 60290
Job Description:
HIPMB
is focused on patent Investment and Advisory Services. HIPMB continues to build on its success in intellectual property investment and monetization in virtually all technology areas, with an emphasis in semiconductor and telecommunications. We are growing and seeking high performance individuals to join the team and make an impact!
We have an exciting opportunity for a senior patent counsel to join our world class team. Our team operates on aspects of intellectual property including licensing, litigation, patent prosecution and investment and advisory activities. You will work with a skilled internal technical and licensing team as well as outside litigation counsel.
RESPONSIBILITIES:Licensing support
Work with licensing lead to develop and execute assertion strategy and achieve business goals.
Provide legal support to technical team doing technical analysis, reverse engineering and preparing claim charts.
Participate in licensing meetings lead by Licensing Lead and present claim charts, non-infringement and invalidity responses to the targets.
Litigation Support
Participate in developing litigation strategy.
Work closely with licensing lead and outside litigation counsel to execute litigation strategy.
Work closely with the team to review, provide input and/or respond to legal documents/matters as appropriate from outside litigation counsel (complaints, interrogatories, depositions, infringement contentions, invalidity contentions).
Provide legal support to technical team doing technical Rule 11 analysis and preparing infringement contentions (claim interpretation, infringement reads, etc.).
Review file wrappers, claim charts, infringement contentions in conjunction with the Licensing Lead, technical team and outside litigation counsel.
Review and provide input to POPRs and PORs prepared by outside counsel.
Legal documentation
Negotiate and draft NDAs.
Draft license agreements to address complex legal concepts.
Third party engagement agreements (e.g. MSA, CSA, Contractor Agreements).
Patent Prosecution / IPRs
Manage and work closely with outside prosecution counsel, the internal technical team, and in-house patent agents on patent prosecution (continuations, re-exams, re-issues).
Work with outside counsel to develop a strategy and address issues related to IPRs.
Investment Opportunities
Review patent file wrappers as appropriate.
Provide legal support to technical team to interpret patent claims.
KEY SKILLS AND EXPERIENCE:
7 - 10 years of experience in patent prosecution, patent litigation, patent licenses, and contract drafting.
J.D. or equivalent required.
Undergraduate degree in Electrical Engineering, Computer Science, or Physics/Mathematics.
Must be able to multitask across multiple engagements and handle several legal matters concurrently.
Demonstrate strategic thinking and a broad legal perspective.
Think and act creatively to develop and apply new innovative approaches to complex problems.
Able to work with a high degree of independence.
Willingness to travel and to work under pressure.
Communication skills, excellent command of written and spoken English.
Hilco Global is an equal opportunity employer. We celebrate diversity and are committed to creating an inclusive environment for all employees.
#J-18808-Ljbffr
HIPMB
is focused on patent Investment and Advisory Services. HIPMB continues to build on its success in intellectual property investment and monetization in virtually all technology areas, with an emphasis in semiconductor and telecommunications. We are growing and seeking high performance individuals to join the team and make an impact!
We have an exciting opportunity for a senior patent counsel to join our world class team. Our team operates on aspects of intellectual property including licensing, litigation, patent prosecution and investment and advisory activities. You will work with a skilled internal technical and licensing team as well as outside litigation counsel.
RESPONSIBILITIES:Licensing support
Work with licensing lead to develop and execute assertion strategy and achieve business goals.
Provide legal support to technical team doing technical analysis, reverse engineering and preparing claim charts.
Participate in licensing meetings lead by Licensing Lead and present claim charts, non-infringement and invalidity responses to the targets.
Litigation Support
Participate in developing litigation strategy.
Work closely with licensing lead and outside litigation counsel to execute litigation strategy.
Work closely with the team to review, provide input and/or respond to legal documents/matters as appropriate from outside litigation counsel (complaints, interrogatories, depositions, infringement contentions, invalidity contentions).
Provide legal support to technical team doing technical Rule 11 analysis and preparing infringement contentions (claim interpretation, infringement reads, etc.).
Review file wrappers, claim charts, infringement contentions in conjunction with the Licensing Lead, technical team and outside litigation counsel.
Review and provide input to POPRs and PORs prepared by outside counsel.
Legal documentation
Negotiate and draft NDAs.
Draft license agreements to address complex legal concepts.
Third party engagement agreements (e.g. MSA, CSA, Contractor Agreements).
Patent Prosecution / IPRs
Manage and work closely with outside prosecution counsel, the internal technical team, and in-house patent agents on patent prosecution (continuations, re-exams, re-issues).
Work with outside counsel to develop a strategy and address issues related to IPRs.
Investment Opportunities
Review patent file wrappers as appropriate.
Provide legal support to technical team to interpret patent claims.
KEY SKILLS AND EXPERIENCE:
7 - 10 years of experience in patent prosecution, patent litigation, patent licenses, and contract drafting.
J.D. or equivalent required.
Undergraduate degree in Electrical Engineering, Computer Science, or Physics/Mathematics.
Must be able to multitask across multiple engagements and handle several legal matters concurrently.
Demonstrate strategic thinking and a broad legal perspective.
Think and act creatively to develop and apply new innovative approaches to complex problems.
Able to work with a high degree of independence.
Willingness to travel and to work under pressure.
Communication skills, excellent command of written and spoken English.
Hilco Global is an equal opportunity employer. We celebrate diversity and are committed to creating an inclusive environment for all employees.
#J-18808-Ljbffr