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Counsel, Intellectual Property
Refer job# YWNM157239
Counsel, Intellectual Property Responsibilities: In close collaboration with other IP team members, strategically develop our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications in a diverse and growing technological field; participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices; manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and Invention Review Board meetings; conduct due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development; conduct in-depth analyses of competitor products and IP portfolios; review outside counsel work to ensure the work, methodology, strategy and costs meet's expectations; collaborate with cross-functional teams and counsel a variety of clients on IP and other legal issues; interact with and provide legal and strategic guidance to senior management, engineers and other functional organizational leadership; collaborate with commercial legal counsel, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters; assist internal and external litigation counsel on IP litigation matters; may supervise exempt or non-exempt employees, and manage employee career counseling, performance evaluation and other issues if required; conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, contractor and vendor matters, and the overall development of intellectual property assets; provide counseling and strategy options on marketing and promotional materials; occasional domestic or foreign travel.

Qualifications: JD Degree from accredited law school and admitted to a US state bar in good standing; USPTO registration in good standing; Strong academic background; BS in engineering or physics; 5+ years working as a patent attorney and counseling clients on intellectual property issues. Must have experience prosecuting mechanical, electro-mechanical, and software patent applications, conducting agreement review and negotiations, as well as possess significant in-house IP experience, preferably in the medical device industry. Experience handling PTAB/EPO Oppositions and supporting patent litigation a plus; Excellent oral and written communication skills, interpersonal, facilitation, presentation, quantitative, analytical, organizational, and follow-up skills; Strong interpersonal skills and strategic thinking; Ability to understand and comply with applicable FDA regulations and Company operating procedures, processes, policies, and tasks. Preferred Qualifications: Significant freedom-to-operate or product clearance experience, preferably for medical device products; 5+ years of drafting and prosecuting patent applications in the area of medical devices and/or software and/or managing a medical device IP portfolio; Working knowledge of patent laws in major jurisdictions outside of the US; Government (USPTO or EPO) and in-house experience a plus.

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