IP Licensing & Transactions Attorney
KPPB LLP
IP Licensing & Transactions Attorney
We are seeking an experienced IP Licensing & Transactions Attorney to lead and execute intellectual property licensing, transactional support, and evidence-of-use (EOU) investigations for a diverse portfolio of patents and technologies. The attorney will draft and negotiate complex agreements, coordinate technical analysis including reverse engineering, prepare EOU claim charts, and support enforcement and litigation strategy. This role requires strong technical collaboration, commercial sensibility, and the ability to translate engineering analysis into persuasive legal positions.
Key Responsibilities
- Draft, review, and negotiate patent, technology, and software licensing agreements, assignments, and related transactional documents.
- Lead IP due diligence for acquisitions, investments, partnerships, and joint ventures; identify and mitigate IP risks.
- Manage and conduct EOU (evidence-of-use) investigations, including preparing detailed EOU claim charts and infringement analyses.
- Coordinate and oversee reverse engineering and technical testing engagements with internal engineers and external experts to support licensing and enforcement strategies.
- Support IP litigation and enforcement by developing infringement and validity positions, producing technical claim charts, and assisting with discovery and expert reports.
- Advise business teams on freedom-to-operate, monetization strategies, and risk allocation in commercial contracts.
- Manage outside counsel, expert witnesses, and consultants; control budgets and drive strategic outcomes.
- Prepare clear, persuasive legal opinions, memoranda, and settlement proposals based on technical and legal analysis.
- Collaborate cross-functionally with R&D, product, and business teams to translate technical details into practical licensing and transactional terms.
- Maintain accurate matter management records, timelines, and client-facing communications to ensure timely delivery of legal services.
Qualifications
- Juris Doctor (JD) degree
- Barred in CA
- 1+ years of experience practicing IP law with a focus on patent licensing, IP transactions, or related litigation (mid level and senior level candidates are also encouraged to apply)
- Demonstrated experience conducting EOU investigations and preparing EOU claim charts.
- Hands-on familiarity with reverse engineering processes or coordinating reverse engineering analyses with technical teams or vendors.
- Proven track record in negotiating and drafting patent and technology license agreements and related commercial documents.
- Experience supporting patent litigation or enforcement matters, including infringement analysis and working with experts.
- Technical background (B.S., M.S., or equivalent) in engineering, computer science, or a related discipline preferred; ability to read and understand technical specifications and claims.
- Excellent legal writing, analytical, and communication skills, with the ability to present complex technical and legal issues to non-technical stakeholders.
- Strong project management skills, attention to detail, and the ability to manage multiple matters and outside counsel simultaneously.
- Comfortable working in a fast-paced, collaborative environment and aligning legal strategy with business objectives.
Benefits
Health, dental, vision, life insurance, 401(k), PTO, CLE support
For this position you must be currently authorized to work in the United States. We do not sponsor for this position.
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