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General Counsel
Consulting
provided
exceptional
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immediately.

Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Intellectual Property And Product Counsel Job in New York > Intellectual Property And Product Counsel

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Intellectual Property And Product Counsel

Refer job# HFKG169977

Intellectual Property and Product Counsel The candidate contributes to a culture of innovation at the cutting-edge of the new digital therapeutic category by leading training, workshops and invention harvesting across our technology and discovery teams. Manages and develops the company's IP portfolio, prepares, and prosecutes patents, conducts IP searches, and freedom-to-operate analyses, supports due diligence assessments and in-licensing for our innovative digital therapeutics business. Develops an understanding of the technology and business strategy to both inform the various IP initiatives as well as the underlying business decision-making processes. Advises the business stakeholders on IP strategies, risk, and, as necessary, deploy associated mitigation strategies. Provides IP diligence, advice and strategy for IP transactions to business development, research and intellectual property functions in support of collaborations, licenses, mergers, acquisitions, equity investments, and divestitures. Regularly anticipates future challenges and risks, innovates to find solutions, and creates business value in response to a highly competitive, dynamic marketplace. Directs and manages outside counsel, and related budgets and, where applicable, negotiates rates, project fees, and timelines. Advises on trademark law, manages, and prepares trademark submissions, and monitors trademark filings for conflicting marks. Develops a thorough understanding of the Company's major partnership and licensing agreements, manages periodic reporting associated with those agreements, and advises cross-functional teams on compliance. Advises engineering, product, and design on copyright compliance, including establishing processes for copyright compliance reviews in new product builds, reviewing content and copy for copyright infringement, and maintaining compliance with the open-source policy. Advises clinical operations teams on copyright compliance in the context of clinical trials, such as in the use of scales and measures, and in trial recruitment materials. The candidate should have 7+ years of experience in creating, prosecuting, and advising on complex patent portfolios and associated strategies relating to both traditional clinical therapeutics (medical devices, pharmaceuticals, biologics, etc.) as well as software, computer systems, computer-implemented inventions, database architectures, data science, artificial intelligence, and/or machine learning applications that leverage data analytics and software interventions to achieve real-world clinical outcomes. Admission to the United States Patent and Trademark Office. Admission to at least one State Bar. Undergraduate degree in computer science, the life sciences, bioinformatics, biomedical engineering, or otherwise related; a strong technological aptitude for learning and working with a range of medical and digital technologies. Solid knowledge of global intellectual property laws and practices, including as may relate to FDA and global regulatory matters. Experience providing advice on complex licensing and/or other transactional matters. Track record of success in innovating and creating business value, and fostering teamwork and collaboration with other teams. Experience with open-source software copyright compliance practices is preferred. Experience with clinical research practices is preferred.

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