Chief Ip Counsel

Min 18 yrs required

Full-time

No

Chief IP Counsel
The candidate will manage a team of IP Attorneys and Patent Agents who are responsible for executing on the company’s intellectual property strategy; manage outside counsel and other resources for effectiveness. Will maintain a solid understanding of firms Coulter Diagnostics’ businesses, technology and product goals, and challenges to establish and implement intellectual property strategies that facilitate those goals and minimize those challenges. Develop and curate a strategic, global intellectual property portfolio (including patents, copyrights, trademarks, and trade secrets). Align IP strategies with the firm's Coulter Diagnostics’ business and strategic plans, including regularly conducting IP Review Boards to confirm alignment with evolving business and strategic plans. Perform due diligence and freedom to operate analysis for new technologies and products. Negotiate, draft and review agreements such as licenses, research agreements, collaboration agreements, confidentiality agreements and material transfer agreements. Conduct, advise and manage activities surrounding adversarial proceedings for third-party IP, including IP litigation, European Oppositions and U.S. IPRs, in collaboration with both Danaher counsel and outside counsel. Assist with M&A activities at the Opco level as needed, from due diligence to documentation.

Job Id R1219539

The candidate should preferably have an advanced degree in biological science, chemistry, engineering (mechanical, software, chemical or electrical) or another field relevant to life sciences or the medical diagnostic industry. Must have Juris Doctor with excellent academic credentials from an accredited law school. Must have active Bar membership in good standing in at least one US jurisdiction. Must have 18 years of intellectual property legal experience in-house at a company or a combination of law firm and in-house experience including Hands-on experience in drafting and negotiating IP-related agreements required. Hands-on experience with US patent prosecution matters in a complex patent portfolio is required. Experience with IP litigation in the US and preferably in other jurisdictions is required. Must have 6+ years of experience leading a team, preferably including global team members. Working experience with nuances of international patent law (via local counsel) preferred, particularly with respect to Europe and China is preferred. Understanding FDA regulations for medical devices is a plus. Admitted to practice before the U.S. Patent and Trademark Office is desired.

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