Job description
Our client, a professional intellectual property services company headquartered in the Silicon Valley and with a presence in Europe and Asia, has exclusively retained Solutus Legal Search to assist its executives in hiring a Vice President, IP Counsel.
Our client serves the global technology industry through focused patent aggregation, licensing programs, and consulting and expert services. The Company’s vision is to optimize the global high-tech intellectual property environment to be efficient, respected, and balanced. This will allow technology companies to have predictable, low-cost design freedom and will provide fair and just compensation to innovators who create impactful patented inventions. The Company is well funded, has a core team of highly experienced business, intellectual property, and legal experts, and is rapidly growing across all aspects of its business.
THE POSITION
Our client is looking for an enthusiastic, results-oriented attorney with significant patent licensing and litigation experience and a deep understanding of complex transactions within the Information Technology industry. The Vice President, IP Counsel will be primarily responsible for supporting patent aspects of the Company’s intellectual property licensing programs, projects and engagements from inception through completion, collaborating with internal and external professionals to successfully engage prospective customers, partners, members and licensees, and other activities, including litigation support, to drive revenue for the company and its licensing clients and partners worldwide. This position reports directly to the SVP, General Counsel & Chief IP Counsel. Ideally, the successful candidate will be based in the Bay Area. The Company will, however, consider excellent candidates located elsewhere in the US.
KEY RESPONSIBILITIES
- Accountable to 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:
- o Industry and company technologies and revenue models;
- o Patents that cover key technologies and revenue streams; and
- o 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.
BACKGROUND AND EXPERIENCE FOR THE SUCCESSFUL CANDIDATE
- Juris Doctor degree from an ABA-accredited law school.
- Engineering or science-based degree is a plus
- Active California Bar license desirable.
- 7+ years patent litigation experience
- Litigation management and/or related experience is required.
- 3+ years of IP licensing experience is required.
- International litigation experience is beneficial.
- A combination of law firm and in-house litigation experience preferred, but not 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, the ability to work with foreign languages is desirable.
- Ability to travel domestically and internationally 25% of the time.
- Languages: Fluent English essential, other languages are a plus.
The successful candidate will have a significant and comprehensive compensation package that includes a base salary, several bonus plans, and equity. The target base salary is $200,000 to $250,000 along with a 30% annual bonus. The total compensation package will vary and depend on the candidate’s level of seniority and number of years of directly relevant experience. The successful candidate will also be eligible to participate in a significant per-transaction revenue share program and will receive equity in the Company.
Solutus has been selected as the exclusive representative on this desirable search. Resumes submitted directed to our client will be forwarded to Solutus for review and evaluation.
Ref. #886-SLS
