Interim Patent Enforcement and Clearance Counsel

Major, Lindsey & Africa’s Interim Legal Talent group has an immediate need for a Temporary 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:  https://www.mlaglobal.com/en/consultant-resources

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.