Interim Part-Time Patent Enforcement and Clearance Counsel (New York City Metropolitan Area)

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.

JOB ID: 262097