Description:

The Patent Counsel or Patent Agent will be an integral member of An American Multinational Corporation's growing intellectual property group and will support teams across An American Multinational Corporation to build and leverage An American Multinational Corporation's intellectual property interests, with a focus on diagnostic assays and diagnostic instrumentation and software. Primary Responsibilities will be the harvesting of invention disclosures in concert with the internal patent liaison staff, and the drafting, filing and prosecution of associated patent applications. Responsibilities may also include handling a full scope of intellectual property issues for the relevant technology areas, including diagnostic instrument and software patent issues, general client counseling, rendering legal opinions with respect to patentability, validity and freedom to operate (as appropriate), patent landscaping, due diligence reviews in support of M&A and other activities, litigation support as needed, and intellectual property-related transactional work. The counsel or agent will work closely with other members of the IP team, Legal Department, R&D, business development, and commercial leadership in a very innovative and growth-oriented environment and will collaborate with other in-house resources and attorneys to accomplish An American Multinational Corporation's strategic objectives. The position is intended for the candidate interested in a truly empowered career focused primarily on patent preparation and prosecution, but also with the opportunity to help shape the current and future IP practice of a very successful company operating in the exciting and growing animal healthcare diagnostic space.

What you can expect in this role:

You will support R&D and the business with worldwide patent prosecution and portfolio management of various technologies, including those related to diagnostic assays, diagnostic instrumentation and software.
You will provide counsel and legal support on patentability issues and may also provide support on freedom to operate issues, including drafting opinions as necessary, as appropriate.
You may be involved in the drafting, review, and negotiation as needed of various forms of IP agreements, including licenses, development, sponsored research and material transfer agreements.
You will work closely with others in R&D's IP liaison group, as well as in the Legal Department in the support of a variety of IP issues.
You may be involved in providing support for IP due diligence in business acquisitions or divestitures.
You will provide counsel to clients and other functional staff on general legal IP questions
You will maintain knowledge of the Animal Health diagnostic industry, and IP and related regulatory developments that affect An American Multinational Corporation, and will advise internal stakeholders as appropriate.
You will work with and supervise US and international outside counsel on various IP matters as appropriate.
You will manage IP related budgets as appropriate and adhere to and model An American Multinational Corporation Purpose & Guiding Principles.

What you will need to succeed:

Patent Counsel candidates will be required to have a Juris Doctorate (JD) from an accredited law school, and be licensed in any US State
Registered to practice before the United States Patent and Trademark Office (USPTO)
Bachelor's degree or greater in Chemical, Mechanical or Electrical Engineering

Skills and abilities that will help you succeed in this role:
4+ years relevant experience in a law firm or corporate setting. Experience should include:

drafting and prosecuting patent applications before the USPTO and international patent offices, preferably in the diagnostic, pharma or biological spaces
drafting patentability, and as appropriate freedom to use and IP clearance opinions
patent searching, landscaping and competitive intelligence
drafting and negotiating of various forms of intellectual property agreements, including licenses, development, sponsored research and material transfer agreements etc.

Broad and detailed understanding of US IP laws and practices, with at least a working understanding of foreign IP laws and practices
Experience in managing large patent dockets
Demonstrated ability to work well in cross-functional teams and to interact effectively with management
Excellent oral and written communication skills
Ability to multitask among numerous projects
Experience dealing with outside counsel, and developing and managing IP budgets
Use of IP Analytics toolsets
Self-starter, with ability to work independently, initiate and coordinate projects and meet deadlines within a changing, fast-paced environment.
Excellent problem-solving skills, sound judgment and strong interpersonal, presentation and communication skills.
Detail oriented
Possess a “can do” attitude.
Strategic-thinker, goal- and team-orientated, able to handle difficult issues in a professional, assertive and proactive manner and history of working within cross-functional relationships in all levels of an organization.
Practical, business-oriented approach to problem-solving, tempered by an appreciation of legal complexity and risk.