SRI International’s intellectual property department provides key
leadership and support for the identification, protection and licensing
of cutting edge innovations across a wide number of scientific and
engineering disciplines. The successful candidate will be responsible
for intellectual property strategy and counseling in support of SRI’s
fast growing commercial and government business in Information
Technology and related areas. Position will report to the Vice-President of Legal and Business Affairs and General Counsel.
Responsibilities:
Patent Portfolio Development
• Collaborate with SRI management, business development, and technical
teams to build value propositions for technologies, and lead the
development of supporting intellectual property strategies and
portfolios
• Identify opportunities and execute strategies for monetization of patent assets
• Actively identify areas for portfolio growth and stimulate generation of ideas and associated invention disclosures
• Lead an intellectual property review committee in making business-aligned strategy and investment decisions
• Conduct training seminars for SRI staff in intellectual property matters
• Select and supervise outside patent prosecution counsel
• Critically review patent applications and office actions for alignment with technical, business, and IP strategies
• In appropriate cases, draft provisional patent applications from technical papers
Intellectual Property Transactions
• Assist business development staff in defining licensing strategies, including development of field-of-use definitions
• Assist SRI’s legal counsel and contract administrators in drafting, negotiating, and reviewing license and other agreements
• Assist inventors, business development and marketing staff with
intellectual property issues in technical, business, and marketing
materials and press releases
• Lead the development of intellectual property-related sections of
proposals, including collating information from other team members when
SRI is prime contractor / systems integrator
Intellectual Property Investigations and Disputes
• Support SRI’s legal counsel with response to demand letters, subpoenas, and other enforcement matters
• Educate staff about issues with 3rd party patents and best practices for avoidance of litigation
Education:
• Registered to practice before the US Patent & Trademark Office (Agent or Attorney)
• MUST HAVE a MS or PhD in Computer Science
Experience:
The successful candidate will typically have at least 5 years of
experience in IP portfolio development in relevant technical fields,
and business-focused experience in technology and IP evaluation and
licensing. A quick study, the candidate will have a demonstrated record
of rapidly getting up to speed on a diverse body of technologies and
business opportunities. The candidate must be a strategic thinker, with
self-confidence and judgment, demonstrating a strong combination of
analytical and communication skills. Experience with Government funding
regulations relating to patents (Bayh-Dole Act), and rights in software
and data (FAR and DFARS) a plus.
Contact:
Apply via our web page at: https://sri.ats.hrsmart.com/
SRI is an equal opportunity employer.
Additional Info:
Employer Type: Other
Job Location: Menlo Park, California
