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Intellectual Property Counsel
Refer job# MTHB167639
 
Intellectual Property Counsel The candidate serves as trusted legal counsel on all IP issues and as the primary IP Legal resource for the BUs R&D and sales teams (with a particular focus on invention mining, IP portfolio development and management, product development lifecycle, training teams on IP matters & best practices, patentability, patent preparation and prosecution, freedom to operate, landscape searches, trademarks, trade secrets, and copyrights), locally and globally, by providing solid, timely, proactive, and practical IP legal advice. Builds and maintains a comprehensive understanding of intellectual property, products and businesses, its 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 and providing IP legal advice at patent review committees to confirm alignment with evolving IP, business, and strategic plans. Manages outside counsel and prepares and prosecutes patent applications with a focus on quality, output, and cost across various countries related to cancer diagnostic technologies, including digital pathology, medical imaging, and artificial intelligence software. Drafts and negotiates IP-related agreements (e.g., licensing agreements, master service agreements, SDKs, EULAs, collaboration agreements, tech transfer agreements, NDAs, etc.). Assists with mergers and acquisitions including due diligence, deal agreements, and integration. Willing to work on the smallest and simplest, as well as the most complex, IP matters. Researches and develops understandable and usable presentations on relevant IP landscapes.

The candidate should have a Juris Doctor and Bachelor's Degree in Computer Science, Electrical Engineering, or Biomedical Engineering (or related field equivalent). Registered to practice before the USPTO. Active Bar Admission in good standing in at least one US jurisdiction. Should have 5-8 years post-bar admission in a law firm and/or in-house experience for a medical technology company with hands-on experience drafting, prosecuting, and managing the US and international patent applications directed to digital pathology, medical imaging, and cancer diagnostics including artificial intelligence software. Experience drafting and negotiating IP-related agreements (e.g., licensing agreements, master service agreements, collaboration agreements, tech transfer agreements, NDAs). Experience counseling clients on patentability, patent infringement, patent validity matters, freedom to operate, landscape searches, invention mining, portfolio development & management, trademark, trade secret, and copyright matters. Demonstrated success in being easy to work with and giving practical, timely, proactive, pragmatic, cost-effective, and straightforward legal advice to clients. Has a growth mindset, works well in a team environment, and is willing to try new or different approaches to problem solving, development, and IP management. Experience with M&A and related due diligence is preferred. Understanding of FDA regulations for medical devices is preferred. In-house experience with a medical technology company is preferred. Experience supporting IP litigation is preferred.
 
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