The successful candidate for this role will manage the Company’s patent portfolio and provide strategic oversight and management of the patent litigation and enforcement activities portfolio of over 4,000 patents and pending applications. The company has a litigation/potential litigation docket in federal district courts, the ITC (International Trade Commission), and PTAB (Patent Trial and Appeal Board).

• Manage patent litigation with a strategic eye to driving optimal outcomes

• Manage IPR (intellectual property rights) and other post-grant proceedings in the U.S. Patent Office as well as opposition proceedings in the European Patent Office

• Lead Freedom to Operate review for new products, including developing risk mitigation strategies and providing business-focused advice to R&D (research & development) and regulatory teams

• Provide ongoing support in competitor product evaluation and claims mapping

• Identify patent enforcement opportunities

• Conduct infringement assessment of competitor products

• Provide commercially focused advice on key patent issues

• Stay apprised of competitor patent filings and commercial activity and devise informed patent and risk management strategy

• Capture patentable inventions through regular interaction with R&D teams and drive filing strategy

• Advise on, negotiate, and draft complex IP (Intellectual Property) transactional and licensing agreements

• Analyze and respond to third-party licensing inquiries or cease-and-desist letters

• Perform IP diligence in support of mergers and acquisitions and advise M&A (Mergers & Acquisitions) team of risks and deal structuring strategies to mitigate risks

• Collaborate and manage outside counsel with strategic prosecution and management of patent portfolio

• Cultivate a patent-aware culture by providing training on patent legal issues

• J.D. (Juris Doctor) from an accredited law school and licensed to practice law in one or more U.S. jurisdictions

• Minimum of 5 years practicing patent prosecution or patent litigation in the U.S., ideally both, in a large law firm, well-established boutique law firm, and/or in-house.

• USPTO (United States Patent and Trademark Office) registered patent attorney preferred but not required

• Undergraduate or graduate degree in engineering, science or equivalent is a plus

• Broad and well-rounded patent law experience including freedom to operate analysis, litigation, IP due diligence support, and global patent prosecution and portfolio management

• Proven experience in managing patent portfolios and litigation from a strategic perspective with consideration for overall company risk and impact on global patent protection

• Ability to identify and resolve complex legal issues in a business-focused and strategic manner

• Proven ability to support business leaders and engage in discussions with leadership on key patent issues

• Ability to thrive in a dynamic work environment, including meeting critical deadlines, flexing communication style to accommodate various audiences, navigating expectations of multiple stakeholders

• Independent worker and thinker with sound judgment

• Effective leadership and influencing management skills

Title: Senior Counsel – Patent Strategy and Enforcement

Location: Winston-Salem, North Carolina/Hybrid (approx. 3 days/office, 2 days/remote)

Client Industry: Consumer Products

Posting: 510676623