Description:
Key Responsibilities:- Provide clear and actionable legal advice to a variety of stakeholders across the enterprise on a range of patent prosecution, enforcement, due diligence, freedom-to-operate and other IP matters to include trade secrets, trademark, copyright, and right of publicity.
- Support the development, management, and enforcement of a portfolio of patent assets in accord with business goals.
- Perform and analyze patent landscape, clearance, and patentability searches and render legal opinions with respect to patentability, freedom to operate and patent validity.
- Develop and maintain an in-depth understanding of A Medical Supplies, Pharmaceuticals & Healthcare Solutions Company's existing and planned innovation programs, technologies and business activities as well as the relevant external IP landscape, including conducting analyses of competitor products and IP portfolios.
- Manage invention disclosure, inventor compensation and patent renewal processes.
- Manage outside counsel, outside vendors and associated budgets in relation to assigned patent matters.
- Apply knowledge of IP trends and case law to develop to improve IP strategies and processes.
- Engage and train internal client groups on IP awareness, capture, protection and enforcement.
- Assist with drafting and negotiation of IP terms of licensing, collaboration and other vendor agreements.
Minimum Requirements:
- 5+ years practicing as an intellectual property lawyer; if an in-house lawyer, law firm experience earlier in career is preferred
- Extensive experience practicing patent law, including all stages of patent prosecution and preparation of in-depth freedom-to-operate reviews
- Admission to practice as a Patent Attorney before the U.S. Patent and Trademark Office
Critical Skills:
- Experience preparing, prosecuting, reviewing and evaluating patents and patent applications in the fields of software applications, healthcare applications, and artificial intelligence
- Extensive experience in rendering legal opinions with respect to patentability, patent validity and freedom to operate
- Experience assisting on non-patent IP matters
- Experience drafting, revising, and negotiating contracts and conducting other transactional work related to patents and intellectual property, including M&A, licensing, co-development and standard vendor/partner agreements
- Experience assessing litigation threats and appropriately partnering with in-house and outside counsel litigation teams on enforcement activities to maximize outcome for company while minimizing costs; Hatch-Waxman experience a plus
- Understanding and ability to quickly learn technical concepts, including trends and issues applicable to existing, evolving and new healthcare technology models.
Additional Knowledge & Skills:
- Provide guidance on open-source-related licensing, usage, compliance and risks.
- Be a trusted counselor and partner to the business in navigating complex and continually evolving business and legal landscapes.
- Possess excellent legal judgment with the ability to be both pragmatic/business-oriented and strategic
- Efficient when working independently and/or collaboratively
Education:
- Preferably possesses a Bachelor of Science or Bachelor of Engineering degree in computer science, computer engineering, software engineering, or biomedical engineering.
- A Juris Doctor degree with excellent academic credentials and a member of a state bar in good standing.
The successful candidate will:
- Bring a depth of knowledge and experience in handling patent and substantive IP legal work, from assessing initial proposals through patent prosecution, portfolio and lifecycle management and commercialization activities.
- Be comfortable in a fast-paced environment and successfully manage multiple projects simultaneously. This will include collaborating with other IP professionals on a variety of IP matters.
