Major, Lindsey & Africa’s Interim Legal Talent group has an immediate need for a Temporary Part-Time Patent Enforcement and Clearance Counsel at a Retail Company.
Overview : Major, Lindsey & Africa is seeking an Attorney with 10+ years of experience in Patent Enforcement and Clearance.
Company: A Retail Company.
Experience: At least 10+ years of Attorney experience in patent litigation, enforcement, and counseling.
Location: NYC Hybrid Preferred.
Responsibilities Include:
Patent Portfolio Enforcement
- Evaluate Company’s utility and design patent portfolio for enforcement opportunities.
- Investigate suspected infringement by competitors, marketplaces, sellers, manufacturers, and other third parties.
- Conduct claim charting and infringement, validity, enforceability, and damages analyses.
- Develop practical enforcement strategies based on legal merits, business priorities, cost, timing, and commercial impact.
- Prepare and respond to cease-and-desist letters, notices of infringement, and other pre-suit communications.
- Support enforcement through online marketplace and platform reporting procedures.
- Advise on potential litigation, arbitration, mediation, settlement, licensing, and other resolution options.
- Manage outside counsel, investigators, technical experts, and other service providers.
- Support claim construction, discovery, expert strategy, settlement negotiations, and overall case management.
- Prepare concise recommendations and risk assessments for senior leadership.
Patent Clearance and Infringement Analysis
- Conduct patent clearance and freedom-to-operate reviews for proposed and existing products.
- Search and assess third-party utility and design patents relevant to product features and designs.
- Prepare claim charts and written infringement and non-infringement analyses.
- Assess patent validity and enforceability when relevant to clearance or dispute strategy.
- Identify design-around options and work with product, design, engineering, and sourcing teams to reduce risk.
- Evaluate competitor patent portfolios and emerging patent activity.
- Review patent allegations, demand letters, and other third-party assertions.
- Coordinate targeted opinions and analyses with outside patent counsel when needed.
- Maintain clear records of searches, analyses, conclusions, and business decisions.
Related Patent Support
- Advise on patent provisions in product collaborations, supply arrangements, settlements, and other commercial agreements.
- Draft and negotiate patent licenses, covenants not to sue, releases, and settlement terms.
- Coordinate with prosecution counsel to strengthen portfolio coverage and align filing strategy with enforcement priorities.
- Identify portfolio gaps based on competitor activity, clearance work, and enforcement experience.
- Advise business teams on preserving evidence and maintaining confidentiality and privilege.
- Develop practical patent clearance and enforcement procedures for cross-functional teams.
Qualifications
- Juris Doctor from an accredited law school.
- Active membership in good standing with at least one U.S. state bar.
- At least eight years of patent litigation, enforcement, clearance, or counseling experience.
- Significant experience with patent infringement, non-infringement, validity, enforceability, and claim construction analyses.
- Demonstrated experience preparing claim charts and freedom-to-operate assessments.
- Experience developing and executing pre-suit and litigation enforcement strategies.
- Experience managing outside counsel and technical experts.
- Strong written, verbal, and stakeholder-management skills.
- Ability to provide clear, practical, and business-oriented advice.
- Ability to work independently and manage multiple time-sensitive matters.
Preferred Qualifications
- More than ten years of patent litigation, enforcement, and counseling experience.
- In-house experience supporting consumer products, retail, e-commerce, manufacturing, or technology businesses.
- Experience with utility patents, design patents, and related trade dress issues.
- Experience enforcing patents against marketplace sellers and other distributed infringers.
- Familiarity with product clearance processes and design-around counseling.
- Experience before the International Trade Commission.
- Technical background in engineering, industrial design, computer science, or a related field.
Information regarding benefits can be found on MLA’s Website on the Consultant Resources Page:
All interested and qualified candidates should apply directly with Major, Lindsey & Africa for review and consideration.
Major, Lindsey & Africa does not discriminate against applications on the basis of age, sex, race or any other protected characteristics pursuant to applicable state or federal laws.
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