Patent Counsel

InterDigital, Inc.Montreal, QC
Remote

About The Position

Our Patent Department plays a core role in the organization and includes over 30 highly skilled US and EP patent attorneys located on the US East Coast, in France (Issy-Les-Moulineaux and Rennes) and UK (London). The department provides patent support to our Research sites, in the United States, Canada and Europe (Rennes, London), collaborating actively with the Research and Innovation teams to protect high value inventions, reading on standards or products. The department also provides full support to our licensing and litigation teams and is focused on strategic portfolio management in support of corporate objectives. InterDigital is currently looking for a talented patent attorney to join our Patent Department. The patent attorney will manage a portfolio of patent assets in wireless communications covering multiple jurisdictions. The selected candidate will be responsible for patent prosecution for part of Interdigital’s global patent portfolio and will support InterDigital’s licensing strategy by building a portfolio of high licensing value. InterDigital invests in professional development training, offering a stimulating working environment, while providing a wide range of opportunities to develop expertise and create value.

Requirements

  • At least 5 years post-qualification experience as a Patent Attorney with EP or US qualifications
  • Significant experience preparing and prosecuting EP / US and foreign patent applications in video technologies or wireless communications through work at a reputable law firm and/or through in-house positions; proficient in all aspects of EP / US patent prosecution
  • Strong technical background in Electrical Engineering, Electronics, Computer Science, Telecommunications, or another closely related technology area relevant to InterDigital’s business activities
  • Experience in the field of wireless communication; working knowledge of wireless standards (3GPP, IEEE 802.11, etc.) and/or experience in standards-based prosecution
  • Previous experience working with foreign counsels
  • English fluency mandatory
  • An aptitude for learning new and complex technology
  • Ability to take initiative and work independently, while frequently collaborating with a broader team
  • Ability to communicate at all levels within the organization and possession of a global mindset

Nice To Haves

  • Post-grant experience including EP Oppositions and patent litigation would be a plus
  • Previous experience in a law firm managing patent prosecution for a large telecommunication company is a plus

Responsibilities

  • Prosecuting a global patent portfolio across multiple jurisdictions
  • Collaborating with inventors, technical experts and patent portfolio management, licensing and litigation teams
  • Preparing and filing patent applications including EP or US national first filings, PCT applications, continuation, divisional, and reissue patent applications
  • Strategically developing and managing patent families to bring value to InterDigital’s corporate licensing programs
  • Mapping claims to standards and products in line with InterDigital’s strategy on standard and product-oriented licensing
  • Assisting in post grant reviews of Interdigital’s patent portfolio
  • Assisting licensing and litigation teams in assertion efforts
  • Evaluating patent assets in connection with potential acquisitions
  • Preparation of Standards Settings Organization (SSO) patent declarations

Benefits

  • professional development training
  • stimulating working environment
  • wide range of opportunities to develop expertise and create value
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