Intellectual Property Counsel

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Intellectual Property Counsel
The candidate will be responsible for: Functions as a proactive, primary resource for R&D of the BU. 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 **MEMBERS ONLY**SIGN UP NOW***.’ 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. Juris Doctor required. Must have Bachelor’s Degree in Computer Science, Electrical Engineering, Physics, or Biomedical Engineering (or related field equivalent). Should have registered to practice before the USPTO. Must have Active Bar Admission in good standing in at least one US jurisdiction. Should have 3-6 years post-bar admission in a law firm and/or in-house experience for a medical technology company. Must have hands-on experience drafting and prosecuting US and international software and/or artificial intelligence patent applications. Should have experience counseling clients on freedom to operate. Should have experience counseling clients on patentability, patent infringement and patent validity matters. 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. Experience supporting IP litigation desired. Must have ability to work in a matrixed, multidisciplinary organization. Must be proficient in Microsoft Office applications, presentation, e-mail, web browsers and spreadsheet software. Experience with Foundation IP, Legal Tracker, Orbit, and Innography (or comparable systems) preferred.

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