Under the direction of the Division IP Counsel, the Director, IP Counsel will support the Genetic Sciences Division’s instrument programs, primarily drafting and prosecuting patent applications, providing freedom to operate clearance, and managing the IP portfolio in a business-conscious manner. There also will be opportunities to work on diverse legal matters including licensing, due diligence, litigation support, and dispute resolution. The IP Counsel also will provide support to the global IP Department on a range of matters.
- Serve as primary IP contact for the Genetic Sciences Division’s instruments platform, providing IP expertise that enables the business to grow.
- Draft patent applications.
- Efficiently and strategically prosecute patent applications.
- Conduct and/or analyze patentability and freedom-to-operate searches.
- Provide timely and actionable counsel to other functions such as R&D, product management, general legal, licensing, and business development.
- Manage outside counsel.
- Train colleagues on IP policy, procedure, and risk mitigation.
- Continuously evaluate business processes, practices, and policies to better enable achievement of business objectives, mitigate risk, reduce inefficiencies, and improve effectiveness.
- Opportunities to draft or review a range of commercial agreements, such as technology licenses, collaboration agreements, term sheets, and other agreements implicating intellectual property rights.
- Opportunities to participate in due diligence and other M&A activities.
- B.S. or advanced degree in engineering or software.
- J.D. degree and an active license to practice in at least one US jurisdiction.
- USPTO registration with 7+ years of experience in US patent prosecution and portfolio management.
- Excellent writing, negotiation, and communication skills.
- Ability to work collaboratively and effectively across organizational and geographic boundaries.
- Ability to influence colleagues at all levels across the organization.
- Critical thinker with a big picture mindset.
- Experience working in both law firm and in-house settings is preferred.
- Experience with European patent practice is preferred.
- Exposure to commercial agreements is a plus.
- Exposure to patent litigation, international IP law, licensing, and/or trademarks is a plus.