REPORTS TO    Licensing Business Unit Leader

KEY WORKING RELATIONSHIPS

Internal: Licensing Teams; Business Development; Legal Counsel; Litigation Services; President & CEO.

External: External Technical Consultants, Patent Attorneys, Litigation Attorneys.

POSITION SUMMARY

A seasoned patent professional who takes ownership in providing legal support for licensing, litigation, and prosecution of existing patent portfolios, as well as due diligence in the acquisition of new patent portfolios.

KEY RESPONSIBILITIES

• Conduct legal analysis and work with internal and external technology experts to create infringement analysis materials with respect to prospective licensee products.
• Participate in licensing meetings to provide legal support in asserting and defending patents.
• Provide input and manage external counsel on key patent matters such as infringement contentions, invalidity responses, claim construction positions and summary judgment, trial, or appellate level motions and briefs.
• Prosecute and manage one or more of the Company’s growing patent portfolios.
• Guide patent prosecution activities which include interactions with internal team members and external counsel with respect to the filing of new, continuation, divisional and/or foreign applications and responses to office actions and other ongoing prosecution tasks.
• Perform pre-transaction patent due diligence including title check, prosecution history review, prior art searches and infringement analysis review.

WiLAN is committed to treating all people in a way that allows them to maintain their dignity and independence. We believe in integration and equal opportunity. Accommodations are available upon request for all applicants with a disability throughout the recruitment process. Please contact Human Resources hr@wilan.com if you require accommodation. We will work with all applicants to accommodate their individual accessibility needs.

We use automated tools, including artificial intelligence, to support aspects of our candidate screening process. All hiring decisions are made by humans, and we are committed to fair, equitable, and compliant hiring practices.

SKILLS AND QUALIFICATIONS

• Bachelor’s Degree in Engineering or Computer Science
• Law degree focused on Patent Law
• Registered United States Patent Attorney
• 7+ years of demonstrated professional experience in a corporate legal department or a law firm environment with a focus on U.S. patent preparation and prosecution, U.S. patent licensing and/or U.S. patent litigation
• Experience in asserting patents in non-U.S. jurisdictions
• Excellent oral and written advocacy skills
• Expert knowledge of federal civil procedure and experience in federal courts
• Solid understanding of the interaction between patent prosecution, licensing, and litigation
• Sound technical competence in one or more technology areas including semiconductors, software, telecommunication, medical and consumers electronics technology
• Self-motivated, organized, resourceful, and excellent cross functional team working skills
• Ability to travel at least 20% per month
• Computer skills including Microsoft Office, USPTO Patent Center, and effective web-based research
• Ability to work in a fast-paced environment, to maintain a high-quality work product, and to work closely with other teams to deliver key organizational objectives

About Wi-LAN Inc.

WiLAN develops and licenses innovative technology, working with key partners to monetize intellectual property through multiple models. Innovation is the principal element that drives economic progress. Without innovation, technology creation and development stagnate, leading to a decrease in productivity growth. History has demonstrated that those that focus on fostering, driving and protecting innovation, create tremendous long-term economic growth and shareholder value. Such innovation-driven economic growth cycles can be traced all the way back from ancient history to today’s rapidly evolving technological advances. Empires, nations, companies have all seen the benefits of this cycle; our collective future success and security depends on continuing innovation. However, innovation requires incentive. Without ownership and protection, solutions can still be found, but typically tend to be incremental or inconsequential. The reason for this is simple: when creative ideas are freely copied without consequence and innovators are not rewarded for their creativity, the risk/reward for development tips to imitation or incremental improvement. Innovative ideas can come... from very small groups and, without protection, such innovation becomes economically prohibitive to all but the largest corporations. Such large entities tend to become complacent when they only have one or two major other large competitors to worry about and as a result, technology advances more slowly and eventually begins to stagnate. Therefore, it is critical to protect innovative technology by creating patents that describe and claim the innovative concepts. Once innovators understand they can own the technology they created and receive an attractive economic incentive for its creation, they are much more willing to continue and even increase their development efforts. This, in turn, attracts third-party investment into such technology and the result is the beginning of strong economic growth. WiLAN has been an innovation-focused company since its founding in the early 1990s and continues to contribute with the development and licensing of new technology solutions to this day. In addition, WiLAN partners with companies of all sizes from around the world to provide its licensing expertise and create real monetary value for their intellectual property.

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