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Intellectual Property Counsel
Refer job# LVCX138804
 
Intellectual Property Counsel The candidate will be securing patent protection for inventions developed at Thermo Fisher Scientific, including drafting applications and Office Action responses, developing strategies for identifying and capturing high-value IP, and overseeing the work of outside counsel; Providing product clearance opinions and advising R&D staff; Supporting patent assertion, defense and litigation matters; Drafting, reviewing and negotiating various IP-centric agreements, including collaborative and sponsored research agreements, technology licenses and confidentiality agreements; Advising and educating internal clients regarding IP-related issues, including new developments in laws and policies. Must have admission to practice before the U.S. Patent and Trademark Office. JD degree or equivalent is needed. Should have membership in good standing of the California Bar (or member in good standing of another state Bar and eligible for RIHC status in California). Bachelor's degree relevant to Thermo Fisher Scientific offerings in Engineering, physical sciences and a strong technological aptitude for learning and working with a range of technologies is needed. A background in chemistry, molecular biology, mass spectrometry, spectroscopy is preferred. Must have 4+ years of practical experience in a law firm. Should have experience reviewing and revising patent applications; thoroughly analyzing patent infringement, validity, and related issues; Experience collaborating with and managing external counsel (e.g., regarding patent prosecution, due diligence, patent analysis/opinions); and undertake and manage a variety of intellectual property matters. Experience in freedom-to-operate analysis is required. Experience in due diligence and litigation analysis and support is a plus.
 
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