Description:
Job Summary:The Senior Intellectual Property Counsel position is responsible for providing expert analysis and counsel on life science intellectual property issues arising in research and development and license agreements; advising on patent strategy; managing the filing, prosecution, and maintenance of A Clinical Laboratory Company patent portfolio including advising with respect to the competitive landscape; overseeing the maintenance of A Clinical Laboratory Company copyright and trademark portfolio; providing expert analysis and counsel on intellectual property issues in general commercial transactions and contracts, strategic corporate transactions and agreements, international and cross-border transactions; intellectual property litigation management; anticipating and guarding against intellectual property legal risks facing the company and developing and recommending company policies and positions on intellectual property legal issues and other specific matters as requested.
Essential Duties and Responsibilities:
- Managing outside counsel in connection with patent prosecution, oppositions, and IP litigation
- Advising on intellectual property issues arising in corporate transactions such as acquisitions and divestitures, joint ventures and collaboration and partnership agreements.
- Drafting, negotiating, and reviewing license, technology, and related commercial transaction agreements.
- Providing analysis and counsel on intellectual property issues including freedom to operate (FTO) analyses with respect to proposed new products and services and commercial transactions (as well as products and services being offered by other industry participants).
- Monitoring and analyzing changes to intellectual property laws and regulations to ensure continued company compliance.
- Advising senior management on changes to intellectual property laws and regulations which may affect the business.
Job Qualifications:
- Education: Bachelor's degree (B.A. /B.S.) or Masters of Science (M.S.) in a life sciences field (or foreign equivalent) and Juris Doctor or equivalent from an accredited law school in the US or equivalent common law degree. A current license in the State Bar as an attorney qualified to practice law in Massachusetts or similar license to practice law in another applicable jurisdiction, and in good standing. Registration as a licensed U.S Patent Attorney.
- Experience: Minimum 6 years of related experience (preferably in a combination of large law firm and corporate settings) with significant focus on experience in life science patent law
- Other: Significant experience leading and assessing complex IP diligence to support life science technology licensing and M&A and other strategic projects and transactions.
- Ability to inspire trust and confidence through strong interpersonal skills and effective collaboration.
- Ability to multi-task and effectively manage multiple projects simultaneously.
- Ability to effectively communicate legal and compliance issues verbally and in writing in a clear and understandable manner to all levels of the organization.
