Job Details

Patent Counsel III

Company name

Organization Type


Job Type


Years of Experience

Min 10 yrs required


Marlborough, MA

Date Last Verified

Oct 18,2017

Posted on

Jul 06,2017
Practice Area
Patent Agents/Technical Specialists >> Patent Agents/Technical Specialists - Life Sciences >> Patent Agents/Technical Specialists - Life Sciences General
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Patent Counsel III The candidate will provide legal counsel on patent, copyright, trademark, trade secret and other technology portfolio matters with respect to its Endoscopy and Urology/Pelvic Health businesses. The position requires representation in company matters relating to intellectual property strategy, intellectual property law and other general legal advice where required. Lead IP Team for Endoscopy and Urology/Pelvic Health divisions. Advise business units on IP legal matters relating to the company, business units and business objectives. Review, advise business on drafts, and approves contracts in a variety of areas, including supply/manufacturer, distribution, consulting, non-disclosure, research, clinical investigator, asset purchase, business acquisitions and mergers, and other areas as needed to ensure intellectual property interests are protected. Consult with outside counsel to provide advice in areas of outside counsel’s expertise. Manage outside counsel spend within acceptable budgets. Review and approve marketing programs, promotional pieces, and product literature and advises business on IP legal issues involving marketing and sales. Provide legal counsel and support in business development activities, including conducting due diligence, facilitating transfer of legal responsibilities, assisting and advising on other acquisition-related issues as they arise, and directing outside counsel in assisting the Company with IP acquisition issues as needed. Provide legal advice and counsel to Company personnel in diverse IP matters by assisting, advising, investigating, researching and resolving IP legal matters within corporate legal policies to ensure that company personnel are aware of and in compliance with applicable OUS, state and federal laws and regulations. Develops and delivers training to Company personnel. Participate in national and international litigation matters, patent office proceedings, investigations and trials by interacting with internal and external legal counsel regarding on-going and actual and/or potential litigation. Develop, implement, and revise policies and Standard Operating Procedures consistent with international and US IP laws and regulations and acceptable Company practices. Monitor and ensure compliance with Company policies and SOPs. Establish and support a work environment of continuous improvement that supports BSC's Quality Policy, Quality System and the appropriate regulations for the area they support. Ensure employees are trained to do their work and their training is documented. J.D. admitted to a state bar in good standing and 10+ years of IP law experience required. Registered Patent Attorney required. Strong academic and science/engineering background required. Life science coursework and comfortable conversing in terms of living systems and medical products preferred. Preference for Medical device experience with 3-5 years of law firm experience. Experience: in drafting and analyzing opinions of counsel including freedom-to-operate, validity/invalidity, non-infringement/infringement, and patentability; in litigating patent or IP technology matters in federal courts; in negotiating, drafting, reviewing and analyzing IP technology agreements; in arbitration, mediation or other dispute resolution proceedings; in patent office proceedings (IPR, PGRs interference, oppositions); with patents and patent laws in Europe and/or other international patent jurisdictions preferred.

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Requisition ID: 333953

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