Senior Intellectual Property Counsel The candidate will functions as a proactive, primary resource for R&D of the BU. Will serves as trusted counsel on all IP issues (with a particular focus on invention mining, patentability, patent prosecution and freedom to operate), locally and globally, by giving solid and practical IP legal advice. Gains a solid understanding of intellectual property, products and businesses, their goals and challenges, and identifies and successfully executes appropriate IP strategies to achieve those goals and minimize those challenges. Aligns IP strategies with business and strategic plans, including regularly attending IP Review Boards to confirm alignment with evolving business and strategic plans. Assists with mergers and acquisitions from due diligence to documentation as needed. Willing to work on the smallest and simplest, as well as the most complex, IP matters. Manages outside counsel in the preparation and prosecution of patent applications with a focus on quality, output and cost. Trains members of the business and R&D Teams in IP matters and best practices. Researches and develops understandable and usable presentations on relevant IP landscapes. Drafts and negotiates IP-related agreements (e.g., licensing or collaboration agreements). Other duties as assigned.
The candidate should have Juris Doctor. Must have Bachelor's Degree in Mechanical, Electrical, or Biomedical Engineering (or related field equivalent). Must be registered to practice before the USPTO. Active Bar Admission in good standing in at least one US jurisdiction is required. Must have 8+ years post-bar admission in a law firm servicing medical device clients and/or in-house experience for a medical technology company. Hands-on experience drafting and prosecuting US and international medical device patent applications is required. Experience counseling clients on freedom to operate is essential. Experience counseling clients on patentability, patent infringement and patent validity matters is needed. Experience in drafting and negotiating IP-related agreements preferred. Understanding of FDA regulations for medical devices is preferred. In-house experience with a medical technology company is plus. Experience supporting IP litigation is desired.
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