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Intellectual Property Counsel
Refer job# YLPI151116
 
Intellectual Property Counsel Duties: Define and execute IP strategy, including IP capture and third-party risk assessment and mitigation Define and implement robust and scalable IP department best practices for freedom to operate protocol and patent and trademark prosecution; develop new and review and enhance existing policies and procedures to streamline the Company's business operations and improve customer experience (for both internal and external constituents); diligence and implement an IP matter management system. Provide primary IP support to Product Development teams for Spinal Implants and Orthobiologics portfolios, both internally developed and in-licensed programs; counsel Marketing & Development teams throughout the entire product development process, from conception to commercial launch; perform freedom to operate analysis and counsel development teams on options for the path forward Draft and prosecute utility and design patent applications and trademark applications; manage outside counsel on patent and various other IP and legal matters, including foreign associates handling foreign patent and trademark prosecution Counsel business stakeholders and Legal colleagues on various IP matters; advise corporate counsel in contract negotiations; review IP contracts; review marketing collateral and engineering-controlled documents for IP issues; manage compliance with settlement agreements and other IP agreement requirements; respond to inbound diligence inquiries (e.g., in connection with capital raising transactions), including negotiation and delivery of legal opinions to third parties regarding the validity of the Company's intellectual property and freedom to operate; review and provide comments to applicable portions of the Company's SEC filings, including registration statements and Forms 10-K; advise and educate surgeon customers, distributors and non-legal colleagues at all levels throughout the Company on IP matters. Provide primary IP support to corporate development team, including assessing opportunities and performing due diligence for M&A activities and new market access; identify IP licensing and IP acquisition opportunities. Support internal and outside counsel with respect to pre-litigation and patent infringement, Inter Partes Review and Ex Parte Reexamination matters. Supervise and mentor a team of IP legal staff including patent attorneys, patent agents and paralegals. Manage budget, including for outside counsel and other IP vendors.

Qualifications: Bachelor's degree in relevant technical field. JD Degree from accredited law school. Experience in an FDA-regulated industry. Demonstrated experience practicing intellectual property litigation, including cases relating to medical device. Experience in a wide range of IP matters in areas including patent origination and drafting, freedom to operate patentability, non-infringement and invalidity opinions, licensing, and internal processes around IP development. Strong ability to effectively communicate verbally and through written correspondence with all levels of peers and leadership at SeaSpine, distributorships, hospitals, and other vendors worldwide. Strong proficiency with Microsoft Office and customer/inventory databases. Demonstrated ability to work creatively, prioritize, and manage team goals and initiatives amidst competing priorities. Critical thinker with strong attention to detail, and ability to problem solve and establish solutions in a high-growth and fast-pace environment. Preferred Qualifications: Experience medical device, specifically spine-related. International patent experience.
 
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