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Chief Ip/litigation Counsel
Refer job# EFFS148667
 
Chief IP/Litigation Counsel The candidate will be a resident expert in providing advice and counsel on a broad range of various domestic and international intellectual property issues related to complex legal matters relating to patent pools and SEP (FRAND) licensing. In particular, the Chief IP/Litigation Counsel is responsible for managing all phases of litigation and related strategy, including supporting worldwide enforcement actions filed by HEVC Advance licensors, overseeing the in-house legal team and related supporting activities including document and contract management and compliance,participating and providing legal expertise as part of the patent licensing team,managing the HEVC Advance world-wide trademark prosecution and licensing activities, reviewing and assisting in the negotiation of license agreements and settlements, and providing general intellectual property and other legal advice. The Chief IP/Litigation Counsel position reports directly to the CEO and will work closely with the Outside General Counsel/Antitrust Counsel and manage various world-wide outside litigation counsels. Effectively and efficiently manage outside counsel on a wide range of IP and competition issues. Provide legal guidance and participate as lead managing counsel in various patent licensing initiatives. Assist in the review of IP licensing agreements and settlements. Participate as part of the core leadership team to strategically plan and manage the patent licensing activities. Manage a legal team of professional and administrative members and be responsible for their work product provided to other HEVC Advance team members and licensors/licensees. Primary legal contact point between HEVC Advance and the HEVC Advance Licensors(s). Remain fully updated on legal trends, industry trends and changes to laws and regulations related to patent licensing. Prepare and present legal updates to HEVC Advance licensors. Participate in various industry forums. Provide intellectual property compliance training as required. Deep patent litigation experience, and international litigation management are required. Deep understanding of worldwide licensing and litigation of standard essential patents are required. Deep understanding of patent, competition, and antitrust laws around the world, including in the US, Europe and China are required. Must be, or be able to become, a technical expert in H.265 and related video compression technologies are required. Must have exercised successful decision-making authority for patent litigation are required. Must be well versed in patent prosecution from both substantive and procedural standpoints are required. Must be well versed at understanding contract language and patent law involving highly complex patent licenses and SEP/FRAND issues are required. Must have lead patent assertion negotiation experience are required. Must have experience managing legal and administrative staff are required. Must understand and incorporate likely business input into legal strategy, as appropriate are required. Juris Doctorate from an accredited college or university are required. Minimum of 8-10 years patent legal/litigation experience preferably in consumer electronics and/or video or audio compression related technologies are required. 8-10 years negotiating complex licensing agreements are required. Admitted to practice before the U.S. Patent and Trademark Office. in good standing with a State Bar. Must be able to manage substantial travel domestically and internationally are required. Must be willing to work out of an office in Boston, MA are required. Must be eligible to work in the United States are required. Must be willing to adjust work schedule to international time zones as needed are required. Bachelor's Degree in Engineering from an accredited college or university are required. Prior experience with video or audio compression technology are required. Sound judgment in developing and implementing legal solutions are required. Strong oral and written communication skills are required. Strong interpersonal and leadership skills are required. Able to work effectively with all levels of an organization are required. Demonstrated ability to develop process-driven solutions to issues are required.
 
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