Intellectual Property Counsel

Leica Biosystems

Description
<div id="jobDescriptionText" class="jobsearch-jobDescriptionText jobsearch-JobComponent-description css-10og78z eu4oa1w0"><div> <p>The IP Counsel for Leica Biosystems is responsible for providing IP legal support for Leica Biosystems’ business units directed to cancer pathology diagnostic instruments, hardware, software, imaging devices, and consumables.</p> <p></p> <p> This position is part of the global LBS Legal Department. At Leica Biosystems, their vision is to advance cancer diagnostics and improve lives. This role is an important part of the IP team and reports to the Chief IP Counsel responsible for global IP strategy at Leica. If you thrive in a proactive role and want to build a best-in-class IP organization, read on.</p> <p></p> <p> Key Responsibilities:</p> <ul> <li> Serve as trusted legal counsel on all IP issues (with a particular focus on invention harvesting, IP portfolio development &amp; management, IP training, freedom to operate, landscape searches, trademarks, trade secrets, and copyrights), by providing solid, timely, proactive, cost-effective and practical IP legal advice.</li> <li> Work directly with engineers, scientists, marketers, and others involved in research and product development globally on IP matters as well as sales and the global Leica Biosystems IP/Legal Team.</li> <li> Build and maintain a comprehensive understanding of Leica Biosystems’ IP, products, and businesses, its goals, and challenges, and proactively identify and successfully execute appropriate IP strategies to achieve those goals and minimize those challenges.</li> <li> Manage outside counsel and assist with the preparation and prosecution of patent applications with a focus on quality, output, and cost across various countries related to cancer pathology diagnostic instruments, hardware, software, imaging devices, and consumables.</li> <li> Draft, negotiate, and conduct due diligence for the IP aspects of agreements (e.g., licensing agreements, master service agreements, technology transfer agreements, sponsored research agreements, end user license agreements (EULAs), open-source software (OSS), mergers &amp; acquisitions (M&amp;A), etc.).</li> </ul> <p></p> <p> Qualifications &amp; Skills Education:</p> <ul> <li> Juris Doctor with active bar admission in good standing in at least one US jurisdiction.</li> <li> Registered to practice before the USPTO.</li> <li> Bachelor’s degree in engineering (biomedical, computer, electrical, mechanical), Computer Science, or related field equivalent.</li> </ul> <p></p> <p> Required Experience:</p> <ul> <li> 4-7 years post-bar admission in a law firm and/or in-house experience with hands-on experience drafting, prosecuting, and managing US and international patent applications directed to hardware and software devices.</li> <li> Experience counseling clients on patentability, patent infringement, patent validity matters, freedom to operate, landscape searches, invention harvesting, portfolio development &amp; management, trademark, trade secret, and copyright matters in the areas of software and hardware.</li> <li> Demonstrated success in being easy to work with and giving practical, timely, proactive, pragmatic, cost-effective, and straightforward legal advice to clients in a collaborative environment.</li> </ul> <p></p> <p> Preferred Experience:</p> <ul> <li> Experience drafting, negotiating, and conducting due diligence for the IP aspects of agreements (e.g., licensing agreements, master service agreements, technology transfer agreements, sponsored research agreements, end user license agreements (EULAs), open-source software (OSS), mergers &amp; acquisitions (M&amp;A), etc.).</li> <li> An understanding of US and European government regulations for medical devices.</li> <li> Experience with cancer pathology diagnostic instruments, hardware, software, imaging devices, and consumables.</li> </ul> <p></p> <p> When you join us, you’ll also be joining Danaher’s global organization, where 80,000 people wake up every day determined to help our customers win. As an associate, you’ll try new things, work hard, and advance your skills with guidance from dedicated leaders, all with the support of powerful <b>Danaher Business System</b> tools and the stability of a tested organization.</p> </div> <p></p></div>
Posted
Updated
Closed
Practice Areas
Intellectual Property
Specialties
Patent Prosecution, Technology Transactions, Licensing, Trademark, Copyright
Experience
4 to 7 years
Employer Type
In-House