Director of Intellectual Property (Washington) - SonoSite Inc

Director of Intellectual Property

Major, Lindsey & Africa has been exclusively engaged by SonoSite, Inc. to conduct this search for its newly created position of Director of Intellectual Property.

The Director of IP will be responsible for directing and executing the intellectual property strategy for the company. Duties include managing patent litigation matters (including the management of outside counsel), counseling the business on IP matters related to product development, and overseeing licensing activities and patent prosecution. Success in this role will require thoughtful leadership and the drive to execute strategy in an interactive and open environment. The ability to interact effectively with internal and external audiences and capture the big picture vision is critical.

Required expertise and characteristics:

J. D. degree from an A.B.A. accredited law school.
Minimum of 10 years related experience required, experience at the 15+-year range is ideal.
Experience managing patent litigation and providing IP counsel to product development efforts, including collaborating with R&D staff on patent strategy.
Demonstrated understanding of technology in the electrical arts is required. Undergraduate degree in electrical or mechanical engineering (EE or ME) preferred.
Medical device industry experience is preferred.
A combination of experience gained both in a law firm and the in-house environment is required.
Ability to communication effectively with engineers and business and legal professionals, internal and external to the company, including senior management. Ability to distill complexity with clarity and precision and act decisively.
Ability to develop effective working relationships in a collegial environment. Ability to be a team player and work collaboratively to obtain results.
Self-starter and assertive.
Excellent verbal and written skills.

City Bothell (about 20 minutes from Seattle)
State Washington
Country USA
Web Address www.sonosite.com
MLA Job ID: 358417
Position Type: InHouse
Min Experience (yrs): 10
Practice: Patent with Bar, Intellectual Property, IP Prosecution-Reg
Listing Office: Seattle
Contact Name: Karen Andersen or Alisa Tazioli
Email Address: sonosite@mlaglobal.com
Contact Phone: 206-218-1010
Location: Bothell (about 20 minutes from Seattle), Washington

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Patent Counsel - Intertrust Technologies 2-5 Years Patent Prosecution

Intertrust develops and licenses intellectual property for Digital Rights Management (DRM) and trusted computing. The Company holds over 100 patents and has more than 200 patent applications pending worldwide. Our patent portfolio covers software and hardware techniques that can be implemented in a broad range of products that use DRM and trusted computing technologies, including computer operating systems, digital media platforms, web services, and enterprise infrastructure. We have research, engineering, and IP groups focusing on developing and monetizing next-generation technologies and inventions.

Requirements:
• 2-5 years of patent prosecution experience with a law firm and/or major corporation
• Must have an EE and/or CS degree + knowledge of software / multimedia technology
• Law degree from a top-tier, accredited law school required
• Must be admitted to the USPTO
• Top academic credentials and membership with a state Bar required.
• Local candidates are preferred, but relocations would be considered for exceptional candidates.

Responsibilities:
• Preparing and prosecuting US and foreign patent applications.
• Perform patent infringement and validity analyses.
• Provide legal advice regarding patent viability, filing patent applications, domestic and foreign patent strategies.
• Supervising outside counsel; infringement and clearance analysis.
• Advising inventors and management on a variety of intellectual property matters.
• Reviewing prior art search reports.
• Supporting litigation teams.
• General client counseling on patent, trademark, and copyright matters.

Why this is a great opportunity:
• Extraordinary (famous) patent portfolio.
• Core patent portfolio has good shelf life.
• Exceptional management team.
• Profitable, stable private company.
• Talented engineering team.
• Interesting technology focus.
• Autonomy and substantive responsibility.

City Sunnyvale
State CA
Country USA
Web Address www.intertrust.com

MLA Job ID: 358435
Position Type: InHouse
Min Experience (yrs): 3
Practice: Patent, Intellectual Property
Listing Office: San Francisco
Email Address: intertrustpatent@mlaglobal.com
Location: Sunnyvale, CA

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Director of Litigation (Santa Clara) - O2 Micro 5-8+ years Patent Litigation

O2 Micro is looking for a Director of Litigation to work in their Santa Clara, California corporate office. This attorney will have between 5-8+ years of patent litigation experience at a national law firm well-known for patent litigation.

Candidates will:
• Direct, review and manage case development, discovery and trial strategy (this is a hands-on role);
• Manage the outside counsel selection process and act as a point person for outside litigation counsel;
• Develop and execute litigation, settlement and licensing strategy;
• Forecast future legal expenses and manage current legal expenditures; and
• Train and supervise junior in-house lawyers in litigation, including motion and brief writing, claim construction, witness preparation for deposition and trial, etc.

Candidates will also have the opportunity to supervise and manage the contract review team, manage the trademark portfolio and negotiate and draft license agreements. Depending on interest, candidates may also broaden their skills in the areas of securities, corporate governance and mergers and acquisitions.

Requirements:

• 5-8+ years patent litigation experience at a top national law firm well-known for patent litigation;
• Strong academic credentials;
• Engineering background helpful. Must at least have a high comfort level with technology.
• Ability to communication effectively with engineers, and business and legal professionals, internal and external to the company, including senior management;
• Self-starter and assertive;
• Demonstrated commitment to in-house role.

Why this is a great opportunity:

• The position offers a great deal of responsibility and autonomy;
• This is the perfect chance for a patent litigator to branch out and gain experience in areas such as licensing, corporate governance, M&A and securities and other areas of litigation; and
• There is an opportunity for upward career advancement.

Legal Department:

The legal department is headed up by GC, Joe Lin (J.D. University of California, Los Angeles, 1993), who is based in Santa Clara, CA. Mr. Lin joined O2 Micro as General Counsel in July 2002. Prior to O2 Micro, Mr. Lin was Vice-President, Corporate Development and General Counsel at Silicon Genesis Corporation, a pre-IPO wafer process company. Mr. Lin has worked with high technology companies for over seventeen years both as a lawyer and briefly, as an engineer. Prior to his roles as General Counsel, Mr. Lin practiced with Morrison & Foerster LLP specializing in corporate, securities and licensing and with Blakely, Sokoloff, Taylor and Zafman focusing in patents. The legal department has additional offices in Asia and totals 27 employees.

Current IP Litigation:

O2 Micro has on-going IP litigation, with which the successful candidate will become immediately engaged.

The Company (from Hoover’s):

Oh to make mobile microchips like O2Micro does! O2Micro International makes integrated circuits used in mobile products such as cell phones and notebook computers. Its products include energy-saving chips that connect a computer’s microprocessor to plug-in cards, chips that let a notebook computer play a CD without powering up the main processor, products that manage and maximize battery usage, and inverters for converting battery power for use by LCDs. O2Micro’s products have been used by equipment makers such as Acer, Dell, Fujitsu, and Siemens. The fabless semiconductor company is domiciled in the Cayman Islands but derives most of its sales from customers in Asia.

We don’t mean to suggest that O2Micro is litigious — is that an injunction in your pocket? — but the company did spend more than $10 million on patent litigation in 2005, nearly double what it spent on legal fees the year before. (O2Micro also spends prodigiously on R&D to generate all those patents, at more than $25 million a year.) The company is carrying on litigation to protect its interests in Taiwan and the US. O2Micro has about 175 issued patents, with more than 400 patent applications pending around the world.

O2Micro International’s principal chip-making contractors are Taiwan Semiconductor Manufacturing Co. (TSMC), United Microelectronics Corp. (UMC), and X-FAB Semiconductor Foundries. Wasatch Advisors owns about 17% of O2Micro International. FMR (Fidelity Investments) holds 15% of the company. Capital Research has an equity stake of around 9%, while RS Investment Management owns nearly 6%. The company has approximately $500 million in market capitalization and $160 million in revenues for 2007. Over 1000 employees worldwide work at O2Micro.

City Santa Clara
State CA
Country USA
Web Address www.o2micro.com
MLA Job ID: 358434
Position Type: InHouse
Min Experience (yrs): 5
Practice: IP Licensing, IP Transactions, IP Lit-Enforcement, Intellectual Property
Listing Office: San Francisco
Email Address: o2micropatent@mlaglobal.com
Location: Santa Clara, CA

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Corporate Counsel (San Diego) - DivX Inc In-House

Our client, DivX, Inc., a cutting edge digital media format technology company, has retained Major, Lindsey & Africa on an exclusive basis to conduct their search for two corporate counsel. Both positions will be located in San Diego, California. The scope of the job duties will be fairly broad; however, there will be a focus on licensing and the negotiating and drafting of commercial contracts. All of the licensing is done internally. The team processes approximately 180 contracts a quarter. They deal with a lot of “one off” situations and so their deals are rarely standard.

In addition, this attorney will be called upon to work on a wide range of day-to-day matters, including litigation management, employment, securities compliance, acquisitions, financings, and a wide range of intellectual property issues.

Travel is minimal unless the candidate requests otherwise.

Candidates must have at least two years of legal experience; top law school credentials required; excellent law firm training; experience negotiating and drafting licensing agreements, software in particular; experience negotiating and drafting a wide variety of commercial contracts; exceptional written and verbal communication and excellent negotiating skills, and a demonstrated interest in technology and consumer electronics. Desired experience includes familiarity with consumer electronics sales, licensing and distribution; experience with patent, trademark and copyright licensing; litigation and/or litigation management experience; experience with the Digital Millennium Copyright Act; experience with employment law and SEC compliance and background in software and/or technology. Fluency in French, Mandarin Chinese or Japanese is a big plus.

DivX offers a competitive compensation and benefits package. Please submit resumes to the attention of Deb Ben-Canaan via email to: divxcc@mlaglobal.com.

Company ” DivX, Inc. ”
City San Diego
State CA
Country USA
Web Address http://www.divxnetworks.com

MLA Job ID: 358444
Position Type: InHouse
Min Experience (yrs): 2
Practice: IP Licensing, IP Transactions, Intellectual Property, Commercial Contracts
Listing Office: San Diego
Contact Name: Deborah Ben-Canaan
Email Address: divxcc@mlaglobal.com
Location: San Diego, CA

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Associate Patent Counsel (California) - 2-4 years BioMarin Pharmaceutical

The Associate Patent Counsel will report directly to Luisa Bigornia, Senior Director – Intellectual Property. This position will be responsible for managing the intellectual property portfolio of BioMarin. On a day-to-day basis, this attorney will work closely with various departments with the aim to advance BioMarin’s long-term business objectives while ensuring maximum protection of its legal rights and interests.

Responsibilities include:

• Life cycle management of assigned IP portfolio for specific company programs, including development and implementation of patent strategy, patent prosecution and maintenance.

• Supervision of outside counsel.

• Assist with the formation and implementation of policies, procedures/guidelines (scientific record-keeping), and committees (Patent Review Committee) related to developing and implementing an IP strategy.

• Assist Legal/Corporate with review of agreements affecting assigned IP portfolio, including licensing.

• Oversight of trademarks relevant to assigned IP portfolio.

• Analyses related to licensing, patentability, freedom to operate, and infringement issues.

• Provide legal support (IP Status Reports, due diligence, etc.) for other groups within the Company, eg. Business Development, Commercial Planning, and Regulatory.

Position Requirements:
• Two to four years overall patent prosecution experience, including at least one year in patent prosecution with a law firm.
• PhD in Immunology or a Biological Science, with emphasis or experience in Immunology.
• Foundation in chemistry a plus.
• Trademark and/or litigation experience a plus.
• J.D., licensed to practice law before any State Bar or the Bar of the District of Columbia (admission to the State Bar of California is not required).
• Registered to practice with the U.S. Patent and Trademark Office.
• Strong interpersonal and communications skills. Ability to work independently while interacting with and advising employees of all levels of the organization.

Company ” BioMarin Pharmaceutical ”
City Novato
State CA
Country USA
Web Address www.biomarinpharm.com

MLA Job ID: 3561
Position Type: InHouse
Min Experience (yrs): 2
Practice: IP Licensing, IP Transactions, Patent with Bar, Intellectual Property
Listing Office: San Francisco
Contact Name: MLA Recruiter
Email Address: biomarinpatent@mlaglobal.com
Location: Novato, CA

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Corporate/Technology Licensing Lawyer (Basking Ridge) - 7-12 Years AVAYA Top Communications Company

ommercial Lawyer with 7 – 12 Years Law firm and In-House experience in Technology and Software Licensing to Support/Be Integral to Business Folks and Sales Department.

AVAYA is a leading global provider of business communications applications, systems and services for more than one million businesses worldwide, including over 90 percent of the FORTUNE 500®. Focused on businesses large to small, Avaya is a world leader in secure and reliable Internet Protocol telephony systems and communications software applications and services.

Reporting to the Vice President, Commercial Law & Contracting, the successful candidate will have substantial experience in negotiating and drafting software and technology licenses and inbound and outbound technology-related transactions, including OEM, reseller, strategic alliance and customer agreements.

He or she must be able to interact directly with the Company’s senior leadership, proposing creative solutions to complex business issues and providing pragmatic risk assessments. The ideal candidate must be able to work collaboratively across multiple functions, organizations and with a diverse group of colleagues from around the world. He or she must be equally comfortable in front of customers, suppliers and peers in both leading and supporting roles.

Company ” Avaya, Inc. ”
City Basking Ridge
State NJ
Country USA
Web Address http://www.avaya.com/

MLA Job ID: 358486
Position Type: InHouse
Min Experience (yrs): 7
Practice: IP Licensing, IP Transactions, Intellectual Property, Telecommunications, Technology, Computer, Commercial Contracts, Corporate
Listing Office: Philadelphia
Contact Name: Lisa S. Rothblum
Email Address: NYIH4@mlaglobal.com
Location: Basking Ridge, NJ

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