The Senior IP Counsel acts as the primary intellectual property resource for Mammotome. This position will work directly with Senior Leaders and R&D Executives at Mammotome on IP matters. This position will also work with the global Leica Biosystems IP/Legal Team.
The Senior IP Counsel will develop an in-depth understanding of the Company’s intellectual property, products and business, and will possess the ability to evaluate and balance both legal and business factors when providing legal advice. Based on a degree in Mechanical, Electrical or Software Engineering, this position will demonstrate a broad knowledge base in areas appropriate for an experienced, in-house IP Counsel at a medical device company.
Essential Functions (Accountability/Responsibility):
- Functions as a proactive, primary resource for R&D and business management for all matters of IP
- Serves as trusted counsel on all IP issues, locally and globally, by giving solid and practical IP legal advice.
- Gains a solid understanding of Mammotome’s 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 the Mammotome’s business and strategic plans, including regularly conducting IP Review Boards to confirm alignment with evolving business and strategic plans.
- Assists with mergers and acquisitions from due diligence to documentation as needed.
- In close collaboration with the R&D teams, constantly renews Mammotome’s IP estate by actively harvesting and protecting new inventions/trademarks.
- Actively manages the IP portfolio in close collaboration with the R&D and business teams.
- Willing to work on the smallest and simplest, as well as the most complex, IP matters faced by Mammotome.
- Selects and manages outside counsel with a focus on quality, output and cost.
- Trains members of the business and R&D Teams in IP matters and best practices.
- Coordinates with outside counsel to prepare and prosecute patent applications domestically and internationally.
- Clears products and services of the Company for freedom-to-operate, including advising R&D on effective ways to design around third-party patents when warranted.
- Identifies opportunities to enforce/monetize Mammotome’s IP estate against infringers.
- Manages competition monitoring/IP landscaping in key technology areas.
- Drafts and negotiates IP-related agreements (e.g., licensing or collaboration agreements).
- Other duties as assigned.
- Mammotome Engineering Team and Business Managers
- Mammotome executive team members
- Leica Biosystems IP/Legal department personnel
- Outside counsel
- Opposing legal counsel on adverse matters
Relocation offered: Yes
- Minimum of 8 years’ experience (post-bar admission law firm) required
- In-house experience for a medical device company preferred.
- Hands-on experience in drafting and negotiating IP-related agreements required.
- Hands-on experience with US patent prosecution matters in complex patent portfolio required.
- Working experience with nuances of international patent law (via local counsel) preferred, particularly with respect to Europe and China.
- Understanding of FDA regulations for medical devices is preferred.
- Proven experience in counseling clients on how to develop new products within crowded patent environments, including patent landscaping.
- Juris Doctor required.
- Bachelor’s Degree in Engineering/Science (Mechanical, Chemical, Electrical, Software Engineering, or related field highly preferred.)
- Patent Bar Admission before the USPTO.
- Active Bar Membership in at least one US jurisdiction.
General Skills/Competencies/Specialized Knowledge
- Ability to work in a matrixed, multidisciplinary organization.
- Ability to apply business and technical expertise to identify potential issues and partner with colleagues across the Company to help solve IP problems of significant importance.
- Professional maturity and confidence in expressing a point of view with senior management.
- Legal Expertise – Understanding of legal requirements involving intellectual property law. Solid professional judgment in all IP matters (including very substantial experience in analyzing FTO situations and drafting FTO opinions). Proven ability to define legal issues and legal risks. Previous experience with multi-site, multi-state, multi-functional organizations. Ability to read and understand state/federal regulations. Ability to interpret laws and regulations and offer creative solutions based on new and changing laws and regulations. Ability to understand business drivers and merged them with IP strategy. Offers proactive and creative approaches to identifying and implementing opportunities to maximize IP protection for commercially significant product developments, and to resolve IP disputes/litigation on favorable terms.
- Communication – Strong executive level communication skills, both written and verbal, equally suited for management, or employee meetings. Promotes timely, ongoing flow of information to others. Communicates and listens effectively in order to develop and maintain key business relationships. Ability to communicate across diverse cultures. Proactively takes part in IP strategy development with the global IP Team at Leica Biosystems.
- Interpersonal Skills – Ability to work with co-workers and customers, both internal and external, of all levels. Ability to professionally interact and build constructive and effective relationships with all levels and functions within the Company. Ability to effectively interface with others on behalf of the organization. Influences key business partners and customers to achieve mutually beneficial results globally. Self-modesty coupled with the highest professionalism and ambition for the Company.
- Initiative – Ability to work well independently and exercise appropriate judgment under general direction. Routinely connects with team/peers to discuss critical decision making. Ability to prioritize workload, goals and tasks consistent with the department and corporate objectives. Ability to take direction from multiple sources and manage conflicting priorities in an effective and efficient manner. Ability to multi-task and handle conflicting priorities, while completing concurrent projects within given time frames and managing interruptions and change requests. Takes initiative to establish new processes and methods to support a variety of coordination activities.
- Presentation Skills – Demonstrated ability to present 1:1 or in group settings. Delivers a clear and compelling message tailored to the needs of the audience.
- Problem Solving – Business oriented approach to problem-solving, tempered by an appreciation for legal complexity and risks. Uses rigorous and practical logic to solve problems. Probes all sources for answers. Solution-oriented. Looks beyond the obvious. Enjoys solving tactical and process problems. Applies appropriate theory and principles, expert judgment, and cross-functional expertise to address a broad range of complex problems.
- Decision Making – Makes timely, sound decisions based on analysis, wisdom, experience and judgment. Proactively inquires for peer input. Utilizes a high degree of creativity and latitude, and willing to take a stand and defend matters of principle and integrity. Relies on extensive experience and good judgment to ensure that expectations are met and that business objectives are achieved.
- Adaptability – Embraces and adapts to change and demonstrates a willingness to learn. Reactionary and adaptable to abrupt changes, arising issues, extreme time pressures, and other exigent circumstances. Ability to respond quickly to change, and to prioritize actions to meet customer needs.
- Trust and Integrity – Interacts with others in a way that gives them confidence in one’s intentions and those of the organization. Accepts responsibility for one’s own decisions and actions. Demonstrates honesty. Keeps commitments. Behaves in a consistent manner and is open, honest and trustworthy.
- Negotiation/Influence – Ability to act as a change agent through dynamic interactions with others. Ability to persuade others. Builds consensus and gains cooperation from others to obtain information and accomplish goals. Negotiates skillfully in tough situations with both internal and external groups. Settles differences without disruption. Wins concessions without damaging relationships. Ability to be both direct and forceful as well as diplomatic.
- Risk Taking/Judgment – Risk management understanding and the ability to manage risk. Inner confidence to take risks and learn from experience. Courage to grab opportunities or discontinue non-value added programs.
- Collaboration and Teamwork – Strong relationship management skills. Ability to build and maintain productive relationships with managers of other functional areas within and across the business areas to seek alignment on objectives. Works collaboratively and cooperatively with members of the Leica Biosystems IP Team and other teams cross-functionally. Ability to work well with other people to analyze and solve problems and to find the best solution. Energetic and willingness to work closely with all team members to achieve success
- Customer Orientation – Demonstrates a keen understanding of various customers’ (internal or external) needs and utilizes a variety of Devicor and Leica Biosystems resources to provide solutions and a compelling value proposition. Understands value-chains and cash-flows
- Global/Business Perspective – Strong understanding of the importance of operating with a global mindset and models global and cultural sensitivity required. Keeps up to date with current practices and trends. Has and uses cross-functional knowledge. Strong grasp of business concepts and related issues. Achieves objectives across varied international conditions. Effectively leverages local skills.
- Computer Skills – Proficient computer system based tools including Microsoft Office applications, presentation, e-mail, web browsers and spreadsheet software.
- Requires both domestic and international travel, primarily to Mammotome locations in the United States and abroad, approximately 10% of the time.
Devicor Medical Products, Inc. is an equal opportunity employer.
As a rapidly growing company, Devicor Medical Products, Inc. is always interested in talented people. We are currently accepting resumes from qualified candidates expressing interest in the openings listed. Due to the large number of inquiries we are not able to accept unsolicited resumes for unspecified or non-posted positions. Our postings change regularly, please check back again.
Devicor Medical Products, Inc. is committed to attracting and retaining the most highly qualified candidates available. We firmly believe that our employees drive the success of the company. With success in mind as the ultimate goal, we strive to create and provide an environment that offers challenging, stimulating and financially rewarding opportunities. As an employee of our organization, you will be consistently challenged to deliver your best.
If you are ready for this challenge, complete the on-line application and submit your resume for consideration. If your background and skills are suitable for consideration for this position, you will be contacted for further information.
Devicor Medical Products, Inc. pays salaries commensurate with market value, and provides exceptional benefits.
: North America-North America-United States-OH-Cincinnati