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About Us:

Xperi invents, develops and delivers technologies that enable extraordinary experiences. Our innovations are foundational to the global entertainment ecosystem, shaping the way millions of people explore, experience, and enjoy entertainment, and enabling billions of devices to add more to an increasingly connected world. Xperi Corporation has announced plans to separate the Product and IP Licensing businesses in 2022. Upon separation, Xperi’s IP Licensing business will be squarely positioned to be the largest standalone public IP licensing company and believe our leading IP platform will create further opportunities for meaningful growth and value creation for our shareholders.

Position Overview:

Xperi is seeking a motivated individual to contribute to the success of its Intellectual Property (IP) & Licensing team with a specific focus on our semiconductor patent portfolio.  The ideal candidate is experienced in patent portfolio management and semiconductor related technology, such as semiconductor design, processing, and/or packaging.  The candidate must be comfortable in a role that connects a highly technical development function with a sophisticated, fast-paced patent licensing function, driving the creation and capture of inventions relevant to licensing objectives and producing licensable patent assets therefrom.  The preferred candidate is a self-starter, energetic & proactive, able to work both independently and collaboratively, and one that brings meaningful patent prosecution and/or industry experience to assist the IP & Licensing team in the development of the Xperi semiconductor patent portfolio.  Qualified candidates must have a well-developed understanding and relevant experience in invention harvesting, global patent prosecution, patent analytics, and patent software systems such as docket management systems.   The preferred candidate will possess a broad understanding and knowledge of Xperi’s technical areas of focus in semiconductor design, processing, and packaging.  Engineering experience in the semiconductor industry would be advantageous.  The Director of IP Rights Management will work closely and collaboratively with inventors, technologists, engineers, and licensing attorneys to develop, maintain, strengthen, and commercialize a strong and growing portfolio of worldwide patent assets.  Both local and remote candidates will be considered.

Responsibilities:

• Provide assistance in the continued development of our industry leading semiconductor patent portfolio and implementation of patent strategies and processes.
• Manage a docket of US and foreign cases by providing guidance to outside counsel during key points of the patent lifecycle including international filing decisions, and recommendations for prosecution for US and international cases including continuations, divisional, RCE, and abandonments recommendations
• Assist with the development of Xperi’s semiconductor patent portfolio by working with a highly technical team of inventors to develop and capture ideas, prepare invention disclosures, and present invention disclosures to the Patent Committee.
• Support patent application preparation of approved inventions by attending invention disclosure interviews, reviewing prior art, providing technical support during drafting and review stages of application preparation, and reviewing claims prior to filing and during prosecution.
• Provide regular docket analysis of features covered by top cases and work locally, virtually, and collaboratively with other team members to improve the portfolio.  
• Proactively manage the patent portfolio
• Generate informative reports and charts that summarize the efforts of the patent group
• Work closely with outside counsel to provide regular feedback on prosecution
• Work proactively with the patent licensing teams and inventors to ensure that invention creation and capture, global patent filing strategy and prosecution provide sufficient patent coverage to meet near and long-term licensing objectives.
• Advise acquisition team on areas of focus for external patent acquisition and assist in evaluation of third-party portfolios for potential acquisitions or partnerships.
• Develop and implement improved patent portfolio management processes.
• Provide IP related training to inventors and other Xperi employees.
• Other duties as assigned.

Qualifications:

• Minimum 5 years of legal experience, including patent portfolio management and patent prosecution work, preferably in semiconductor technical fields.
• Semiconductor related engineering experience is preferred as is a deep technical understanding of semiconductor circuitry, processing, and packaging.
• In-house prosecution management experience is preferred but not required.
• Current member of a state bar and USPTO bar in good standing
• Graduate of top-tier law school preferred
• Engineering, Physics or Mathematics degree strongly preferred
• Demonstrated knowledge and ability to use relevant software including IP docketing tools, data analysis software, Excel, and PowerPoint. Ability to understand and present complex patent data. 
• Possess and continually develop understanding of claim drafting techniques that address recent legislation, administrative rule-making and relevant Supreme Court and Federal Circuit decisions
• Experience drafting and/or reviewing 100+ patent applications.
• Possess a common sense, practical problem-solving approach, intellectual curiosity, a results first orientation and a willingness to work both in a team and independently
• Must be able to manage outside counsel and a patent budget
• Must be able to express ideas and communicate effectively, orally and in writing
• Must have enthusiasm and drive, ability to integrate quickly into the existing team, ability to schedule own workload and plan tasks, and willingness to be flexible and accept new challenges.
• Must be flexible to work in-person or virtually.

Xperi is an Equal Employment Opportunity Employer