Job DescriptionIP Counsel will be responsible for advising internal business and legal partners, as well as managing outside counsel on a wide range of intellectual property issues involving patents, trademarks, trade secrets, and copyrights. This position is a fully onsite role based in San Diego, California and will report to Senior Intellectual Property Counsel for the Diagnostic Solutions Division.
Key Responsibilities:
- Develop and manage a strategic global intellectual portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic's business objectives
- Draft and prosecute patent applications in the biological and chemical arts
- Conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases
- Assist with M&A due diligence, including contract reviews, portfolio assessments, and freedom-to-operate analyses
- Manage IP litigation and administrative proceedings
- Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements
- Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations
- Review marketing and promotional literature
- Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive intelligence, commercial activities, and licensing opportunities
- May participate in conducting periodic training for employees on invention disclosures, litigation preparation, confidentiality, the safeguarding of trade secrets, and other intellectual property topics
Qualifications:
- Demonstrated experience in developing and maintaining a patent portfolio
- Experience in conducting and reviewing patentability and freedom-to-operate searches
- At least minimal experience negotiating and drafting agreements having an IP component
- Experience managing a trademark portfolio is desired
- Possession of excellent interpersonal, communication, and collaborative skills with the ability to impact and influence others at all levels
- Possession of organizational skills and the ability to manage numerous projects and conflicting demands
- Business acumen and ability to distill complex legal and technical concepts into practical legal advice
Education and Experience:
- JD from an accredited law school
- Member in good standing of a state bar and registered to practice before the USPTO
- A Bachelor of Science in Biology, Chemistry, or Biomedical Engineering
- An advanced degree in a biological science, or
- At least 2 years of practical laboratory experience
- 3-7 years of experience as a registered patent attorney
We offer a competitive salary and annual bonus scheme, one of our talent partners can discuss this in more detail with you.
Additional Info:The annualized base salary range for this role is $183,000 to $325,000 and is bonus eligible. Final compensation packages will ultimately depend on factors including relevant experience, skillset, knowledge, geography, education, business needs and market demand.
Agency and Third-Party Recruiter Notice:Agencies that submit a resume to Hologic must have a current executed Hologic Agency Agreement executed by a member of the Human Resource Department. In addition, Agencies may only submit candidates to positions for which they have been invited to do so by a Hologic Recruiter. All resumes must be sent to the Hologic Recruiter under these terms, or they will not be considered.
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