Senior Patent Counsel
Huawei Technologies Canada Co., Ltd.
Ottawa, Ontario, Canada
6d ago

Job Description

Huawei Technologies Canada Co., Ltd., has a Sr. Patent Counsel position to be staffed out of its Ottawa offices. The successful candidate will ideally have 7+ years of in-house and / or private law firm experience with particular emphasis on patent portfolio development and management and outbound patent licensing.

Responsibilities for the Patent Counsel position include :

  • Provision of comprehensive intellectual property support to research and development clients, including patent portfolio development and management, and claim charting of Huawei claims against relevant entities.
  • Interaction with, and representation of, Huawei IP Licensing personnel in connection with outbound licensing initiatives, including negotiation with identified licensing candidates.
  • Rendering of comprehensive intellectual property support to various domestic Huawei Canada Business Units, including advising as to portfolio development strategies and rendering of legal advice to corresponding Canada domestic patent review boards.
  • Critical review and management of outside counsel engaged in patent procurement activities on behalf of Huawei, as well as attending to oversight and training of patent engineer personnel engaged in preparation and prosecution of U.
  • S. and foreign patent applications.

  • Support of Director of IPR division in general intellectual property activities.
  • Cooperate with international (U.S., E.U,, Chinese) IPR teams on patent monotonizing and outbound licensing projects.
  • Assist in the development of policies and procedures to optimize Huawei’s patent portfolio and associated patent practice.
  • Qualifications

  • Outbound licensing experience, including development of licensing strategy, negotiation with adverse parties, and drafting of license agreements
  • Strong patent prosecution background, and interest in patent procurement matters
  • Possess excellent oral and written communications skills
  • Possess excellent patent legal and analytical skills, including demonstrated ability to independently formulate and draft appropriate responses to office actions, and advise clients as to various intellectual property issues
  • Candidates must possess a strong technical background in Electrical Engineering, Physics and / or Computer Science; prior experience working within the telecommunications industry desirable
  • Ideal candidate must have at least 7 years of experience in patent prosecution, outbound licensing initiatives, or a combination of these practices
  • Interest, and ability to work, in multi-cultural environment
  • Limited domestic and international travel
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