Vice President, IP Counsel

Summary

Join a leading intellectual property services company as their Vice President, IP Counsel. This role will focus on supporting patent aspects of licensing programs, collaborating with internal and external professionals, and managing global patent litigation activities. The ideal candidate will have significant patent licensing and litigation experience, a deep understanding of complex transactions in the IT industry, and excellent communication skills. The position reports directly to the SVP, General Counsel & Chief IP Counsel and offers a competitive compensation package including base salary, bonuses, equity, and a revenue share program. The company is rapidly growing and offers opportunities for professional growth within a dynamic and innovative environment. The position is ideally based in the Bay Area, but the company will consider candidates elsewhere in the US.

Requirements

• Juris Doctor degree from an ABA-accredited law school
• 7+ years patent litigation experience
• Litigation management and/or related experience is required
• 3+ years of IP licensing experience is required
• Excellent communication skills, the ability to work with various levels of management, strong analytical skills, detail oriented, and the ability to successfully lead a team to achieve identified objectives required
• The ability to build effective internal and external business relationships and to present complex technical ideas succinctly and clearly
• Strong organizational skills, e.g., maintaining attention to detail on multiple projects simultaneously, and the ability to adjust to changing priorities and deadlines
• Proficiency with MS Office Suite (Word, Excel, Powerpoint)
• Ability and desire to work collaboratively on a team
• Sound legal and business judgment
• Self-starter with strong problem-solving skills
• Capacity to proactively isolate and prioritize issues and to focus on implementing both top-level, strategic solutions as well as the day-to-day initiatives
• Ability to quickly assimilate and understand complex situations and information, including highly technical information
• Able to establish credibility and trust quickly
• English language fluency is necessary
• Ability to travel domestically and internationally 25% of the time

Responsibilities

• Develop high quality and impactful IP cases to support licensing programs and engagements, including working closely with the company’s internal/external SMEs in preparing, reviewing, and presenting high quality and accurate claim charts, providing strong, fact-based responses to non-infringement and invalidity arguments raised in licensing engagements, and providing negotiation support in licensing engagements
• Ensure that the Company maintains a “Best in Class” IP case development process with excellent constituent relationships
• Collaborate with new and existing internal/external SMEs within the Company’s extended subject matter technical network of experts
• Work with Company leadership team to ensure efficient and effective use of case development resources and early identification and resolution of issues associated with capacity or prioritization
• Provide thoughtful legal input and direction on licensing program and case development activities to the broader case development team (LEs, technical and business analysis resources)
• Work closely with outside counsel and/or the licensing team to develop strong global liability and damages cases through rigorous review and analysis of: Industry and company technologies and revenue models; Patents that cover key technologies and revenue streams; and Theories of recovery that reflect and preserve the value of the Company’s patents and are aligned with the Company’s business objectives
• Collaborate with the Head of Acquisitions to proactively identify, efficiently and accurately find, analyze and vet high quality patents that meet the rigorous criteria for inclusion into the Company’s platform and properly value patents
• Actively manage, in collaboration with internal and external teams, Company’s global patent litigation activities, including discovery and technology consulting services. Interface with various departments to facilitate preservation, collection and retention of electronic and/or paper information
• Provide oversight for budgets and financial plans for Company’s litigation matters
• Provide input to fee agreements with outside litigation counsel as needed
• Gain trust and confidence in the high-tech industry by acting in a highly professional, industry-leading manner, and in the best interest of the Company and partners at all times
• Maintain a high state of knowledge and awareness of the industry, including market trends, key players, technology trends, active patent litigation and licensing programs, other IP-based business models, and available patents for purchase

Preferred Qualifications

• Engineering or science-based degree is a plus
• Active California Bar license desirable
• International litigation experience is beneficial
• A combination of law firm and in-house litigation experience preferred, but not required
• The ability to work with foreign languages is desirable
• Other languages are a plus

Benefits

• A base salary
• Several bonus plans
• Equity
• A significant per-transaction revenue share program
• Equity in the Company