Senior Portfolio Management Counsel
Wilmington, DE
Senior Portfolio Management Counsel
Responsibilities: Review invention disclosures, make filing decisions and manage the work of internal and external prosecution counsel to best achieve the desired portfolio strategy within budget. Attain in-depth knowledge of select patent families and propose claim sets, amendments, continuation/divisional strategies, and other prosecution actions to support strategic objectives. Actively participate in portfolio management meetings with engineers, prosecution counsel and members of the Patents team. Work closely with the Licensing Support team to ensure that relevant patents are prosecuted in a manner that is aligned with the company’s licensing programs or other corporate initiatives. Coordinate with, and provide feedback to, company engineers and engineering management on patent-related topics. Track status of assigned portfolio(s) and provide updates to company stakeholders, such as the Head of Portfolio Strategy, the General Patent Counsel, and company management. Support the Litigation team during litigation due diligence and other litigation-related matters. Coordinate the defense of patents in response to third-party validity challenges. Work collaboratively within, and outside of, the Patents team on a variety of patent-related projects. Handle additional responsibilities within the Portfolio Strategy team, which may include SDO policy review and compliance, coordination with joint venture partners, portfolio acquisition due diligence, and/or portfolio sale efforts.
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