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Senior Intellectual Property Counsel
Refer job# MYMD158256
 
Senior Intellectual Property Counsel Duties: Collaborate with various internal business partners to ensure an in-depth understanding of their needs and to foster a trusted partnership around legal matters. Develop and implement strategies to protect and grow global intellectual property assets in line with strategic objectives (patents, trademarks, etc.). Prepare and prosecute worldwide patent applications and conduct patentability and freedom to operate assessments for discovery, development and commercial related activities, working closely with outside counsel and internal stakeholders. Conduct in-depth analyses of competitor products and IP portfolios. Conduct due diligence on potential mergers and acquisitions and in-licensing opportunities as well as freedom-to-operate assessments that drive strategic acquisitions and partnerships and product development activities. Manage and lead the process for invention disclosures, including collecting and screening disclosures, and conducting inventor interviews. Manage domestic and foreign outside counsel to ensure intellectual property filings and projects are completed in a timely, high-quality and economically efficient manner. Interact with and provide legal and strategic guidance to senior management, engineers and other R&D team members and functional organizational leadership. Collaborate with other legal team members on transactions and other contracts, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters. Manage external litigation counsel on IP litigation matters in conjunction with other members of the legal team. Review, advise, approve and/or provide strategic advice with respect to marketing and promotional materials. Conduct employee training sessions on the protection of innovations through the patent process, on best practices for maintaining confidential business information related to innovation or new product development, on managing contractor and vendor practices and processes related to the same, and on the overall development of the Company's intellectual property assets. Support the Research and Development organization with invention brainstorming events and compile results.

Qualifications: Bachelor's Degree and JD Degree from an accredited law school required. US bar admission required. USPTO registration in good standing. 6-8 years of experience drafting and prosecuting patent applications in the area of medical devices/biotechnology, ideally with experience both in a law firm and in-house. Freedom-to-operate or product clearance experience, preferably for medical device products. Excellent verbal and written communications skills required. Strong judgment and ability to assess risk and benefits and convey them in a clear and concise manner both to technical functions as well as to internal business clients/senior management. Ability to maintain confidential/legal information. Desired Experience, Knowledge, and Skills: Advanced degree in engineering or science. Experience in patent office proceedings such as oppositions, reexaminations, or IPR proceedings. Experience in patent/trademark litigation proceedings. Experience conducting due diligence. Ability to work autonomously in a fast-paced, corporate/in-house work environment while effectively managing competing priorities and remaining a valued and respected member of business teams. Desire and natural inclination to work collaboratively as a member of a team and willingness to get involved and learn new skills in order to assume increasing responsibility. Ability to be assertive and persuasive with internal and external parties. Agility and flexibility to handle multiple tasks in a fast-paced environment.
 
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