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GLOBAL SENIOR DIRECTOR, INTELLECTUAL PROPERTY COUNSEL (Silicon Valley)

Location
San Jose, California
Job Type
Full-time
Practice Areas
IP, Patent
Company Name
Solutus Legal Search
Job Title
GLOBAL SENIOR DIRECTOR, INTELLECTUAL PROPERTY COUNSEL (Silicon Valley)

Description

Our client, a leading global provider of lighting solutions for mobile, IoT, and automotive illumination companies has exclusively engaged Solutus Legal to assist the executives with their search for a lead intellectual property attorney.
The Global Senior Director will lead a team of IP professionals located in the Silicon Valley and Europe and will support all aspects of the company’s business worldwide. This hire will provide leadership in patent strategy, patent preparation and prosecution, intellectual property transactions, due diligence, freedom-to-operate analysis, dispute resolution, and litigation support. More generally, you will be responsible for identifying intellectual property issues, developing effective solutions to intellectual property problems, and guiding the business.

Position Summary:

Our client is seeking a highly motivated, experienced leader with a strong engineering background and degrees in electrical engineering, computer science, mechanical engineering, and/or physics to serve as its Head of Intellectual Property. This attorney will be a motivated leader and intellectual property professional with high energy, discipline, and business acumen to help it grow, consolidate, and monetize its flourishing intellectual property portfolio and activities.

Our client has a dynamic and exciting corporate intellectual property and legal team managing multiple technology-oriented businesses with attention to alternative asset management and monetization best practices. Working with this team, this hire will have ultimate responsibility for all technical patent audits, launching and managing large scale claim charting programs, IP pipeline development, and infringement analysis in support of licensing and enforcement activities. This is a leadership position across the company and involves managing an expanding team of talented legal and intellectual property-focused professionals. This is a great opportunity to join a high producing team and to work on novel issues in an exciting, fast-paced environment.

• This role will report directly to the Chief Legal Officer and support a variety of businesses and technology platforms, and related products and services.

Essential Responsibilities:

• Instigate, lead, and develop all patent portfolio claim charting processes bringing rigor, clarity, and focus on high value assets;
• Deliver value across the whole life cycle of patent portfolio development, from the inception of innovation through to monetization;
• Work closely with corporate R&D, international standards organizations, and business partners to drive relevant standard essential patent processes and participate in standards bodies IPR committees;
• Support various patent monetization, IP licensing, and investment programs;
• Support an active patent acquisition program and IP due diligence activities in conjunction with corporate M&A;
• Responsible for guiding all technical arguments for IPRs, validity challenges as well as opposition proceedings;
• Build all infringement analysis and knowledge of future licensees using our client’s proprietary technologies in specific markets;
• Lead all reverse engineering efforts both internally and via outside specialists and firms;
• Work closely with R&D to ensure that sufficient ideas and invention disclosures are generated.

The ideal candidate will be comfortable working in a fast-paced environment, responsive, business-minded and team-oriented. This hire will have a willingness to roll-up their sleeves and pitch in and will work effectively and collaboratively within a dynamic and growing environment.

Compensation is competitive.

Local candidates (San Francisco Bay Area) only.

Solutus Legal has been engaged on an exclusive basis to conduct this search. Interested candidates must submit their resumes directly to Solutus for consideration to search@solutuslegal.com. Resumes submitted to our client will be redirected to Solutus.

Ref. #514-SLS

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