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Senior Licensing Attorney – Enterprise Software

Job Type: Full time
Company/Firm: Intellectual Ventures
Location: Palo Alto, California
Date posted: 09/30/09
Salary: Salary dependent on experience
Job Description:

 Invention Law Group, PLLC is looking for a Senior Patent Attorney-Licensing. We are looking for an individual who loves fast-paced business action, is detail-oriented, independently motivated, and has the confidence and ability to interact with clients and co-workers in a professional, approachable, and positive manner.

Intellectual Ventures (“IV”) is a privately-held, invention investment company based in Bellevue, Washington. Their business model centers on creating, acquiring and licensing pure invention in a variety of technology areas. They plan to commercialize inventions through licensing, spin-offs, joint ventures and industry partnerships.

• Working closely with business managers and senior executives, the Senior Patent Attorney will provide leadership and subject matter expertise primarily in the patent licensing area.
• Guide portfolio development for future licensing and enforcement, 
• Partner with licensing executives to develop licensing strategy within vertical business unit
• Managing patent licensing and enforcement and asserting patents.
• Conduct patent claims and patent infringement analysis.
• Assist in negotiation of various outbound patent license agreements.
• Provide guidance to prosecution (reissues, reexaminations, continuations, foreign filing, etc).
• Provide direction and effectively manage relationships with multiple outside counsels in all of the above. 
• Play appropriate role (which could vary from support role to lead negotiator to sole attorney depending on complexity of the transaction and relationships) in drafting and negotiating complex contracts

Necessary Experience:

 Key Qualifications and Required Skills:
• A qualified candidate will be a registered patent attorney, with strong patent licensing experience, in software information technology industry, broad electronics, wireless background and possess the following:
• 10+ years patent law experience with 2+ years recent experience in IP licensing (preferably patent licensing)
• J.D., Law degree
• Registration before the U.S. Patent & Trademark Office and license to practice in at least one state (preferably California) is required.
• Bachelor’s degree (preferably graduate degree) in Electrical Engineering, Computer Science or some other very closely related field is required.
• Broad technical knowledge, familiarity with relevant technologies
• Excellent negotiation and contract drafting skills
• Expert knowledge of principles, practices, case law and state of the art in patent licensing
• Experience managing outside counsel
• Ability to plan, organize and direct legal staff
• Ability to communicate information effectively, both orally and in writing
• Ability to work well with others and to quickly assimilate and understand information (including highly technical information)
• Ability to make sound business decisions
• Some work experience in an engineering role is preferred

Contact: Please apply directly to:

We are an equal opportunity employer

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