Senior Patent Attorney

Location:
Plano, Texas, United States
Employment Status:
Contract/ Full-Time

Position:                     Senior Patent Attorney

Reports To:                Senior VP, Chief Intellectual Property Officer & General Counsel

Employer:                  Conversant Wireless Licensing

Location:                   Plano, Texas USA

 

Role:

The Senior Patent Attorney’s role is to provide both patent prosecution and patent licensing/litigation services. The Senior Patent Attorney is responsible for overseeing the filing and prosecution of patent applications in multiple jurisdictions around the world. The Senior Patent Attorney also is an integral part of the company’s licensing and litigation teams. The company’s patent portfolio is focused on telecommunications and semiconductor technologies.

 

Duties:

  • Patent prosecution, including:
  • reviewing and adapting patent applications drafted by other patent attorneys or agents to conform with the best practices of the company
  • preparing continuation, continuation-in-part, divisional, or re-issue applications in-house, and assisting outside counsel with preparing and filing continuation, continuation-in-part, divisional, or re-issue applications as required
  • responding to patent office actions, including working with both internal licensing engineers and outside counsel to develop positions
  • Working with internal and external design analysis and reverse engineering teams in documenting uses of the company’s patents
  • Providing technical and legal opinions in connection with licensing
  • Preparing positions on infringement and validity in licensing discussions
  • Providing team leadership for assigned licensing portfolios
  • Travelling as part of the licensing negotiation team
  • Drafting patent license agreements
  • Assisting litigation counsel in litigating selected patents
  • Performing due diligence on patent acquisitions

Requirements:

  • Bachelor’s degree in Electrical or Computer Engineering or the equivalent
  • Registered Patent Agent/ Patent Attorney in the US or Canada and experience with patent prosecution
  • At least 5 years of relevant work experience with patents
  • Knowledge of the patent licensing business
  • Attention to detail, but pragmatic in approach
  • Excellent communication, interpersonal, and leadership skills including the ability to present material, written and oral, in a concise, effective, and professional manner to a variety of groups and individuals and convey legal related advice to non-lawyers
  • Ability to work both effectively as a team member and independently with minimal supervision
  • Well-organized and be able to handle several projects simultaneously
  • Ability and flexibility to travel

Assets:

  • Experience as an engineer in the telecommunications or semiconductor industry
  • Experience in patent licensing or technology transfer

 

 

Copyright © 2020 “Conversant Intellectual Property Management Inc.” is the new name of MOSAID Technologies Incorporated.
“Conversant Intellectual Property Management Inc.” is the new name of MOSAID Technologies Incorporated.