IP Legal Director

Req
Remote Position:
Hybrid
Region:
Americas
Country:
Canada
State/Province:
Ontario
City:
Toronto

The IP Legal Director is an experienced, business-oriented professional responsible for leading Celestica’s global intellectual property strategy and management of patents, open source software and standards participation. The IP Legal Director will partner closely with engineering, IP management and executive teams to protect and optimize the company’s innovation assets and mitigate IP risk.

• Create and implement IP strategies aligned to Celestica product roadmaps and corporate objectives, including building and maintaining a high-value, defensible global corporate patent portfolio.
• Perform invention mining and harvesting across Celestica hardware and software global engineering teams to create high quality invention disclosures and triage disclosures.
• Work with internal teams and external counsel to draft, file and prosecute domestic and foreign patent applications.
• Oversee investigation and responses to third party IP assertions and manage pre-litigation strategy and litigation matters in collaboration with external counsel.
• Establish and maintain processes for M&A IP diligence, open source compliance and participation in standards development organizations, including IP policies and contribution strategies.
• Develop and execute ongoing IP and open source software training and compliance metrics.
• Support IP issues arising in commercial initiatives and agreements.
• Domestic and international travel will be required.

• Demonstrated success building and managing a high-quality patent portfolio in complex technical domains, including ASICs, FPGAs, board/system design, firmware, device drivers, networking protocols and related software.
• Strong track record handling freedom-to-operate assessments, non-infringement/invalidity analyses and IP disputes, including managing external counsel in litigation or licensing negotiations.
• Experience with open source compliance programs and standards participation.
• Excellent oral and written skills.
• Ability to translate technical concepts into simplified business risk/reward decisions and influence senior stakeholders.
• Ability to work in a fast-paced environment, to prioritize work for business impact and to collaborate effectively with engineering, senior executives and legal team members.

• Duties of this position are performed in a normal office environment.
• Duties may require extended periods of sitting and sustained visual concentration on a computer monitor or on numbers and other detailed data.
• Repetitive manual movements (e.g., data entry, using a computer mouse, using a calculator, etc.) are frequently required.
• Overnight travel may be required.

• Minimum of ten (10) years of relevant IP experience with significant focus on U.S. patent preparation and prosecution and supporting hardware solutions and manufacturing/JDM/ODM environments.

• Juris Doctor (JD) from an accredited law school; active bar membership in good standing.
• Undergraduate or graduate degree in electrical engineering, systems design, computer engineering, computer science or a related technical field.
• Licensed patent attorney and registered to practice before the United States Patent and Trademark Office.

This job description is not intended to be an exhaustive list of all duties and responsibilities of the position. Employees are held accountable for all duties of the job. Job duties and the % of time identified for any function are subject to change at any time.

Celestica is an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, age, pregnancy, genetic information, disability, status as a protected veteran, or any other protected category under applicable federal, state, and local laws.
At Celestica we are committed to fostering an inclusive, accessible environment, where all employees and customers feel valued, respected and supported. Special arrangements can be made…