Job Details

Global Ip Counsel

Company name

Ascensia Diabetes Care Holdings AG

Organization Type


Job Type


Valid Through

Nov 13, 2020

Posted on

Jul 31, 2020

Years of Experience

Min 3 yrs required


Parsippany, NJ, United States

Employment Type



Practice Area
Intellectual Property >> Intellectual Property - General
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Global IP Counsel
Duties: Independently manage and oversee a portion of the global patent portfolio for the company and Epredia businesses, and direct outside counsel in the filing and prosecution of domestic and international patent applications to ensure prosecution is aligned with business strategies and meets quality, timeliness and cost standards. Develop, coordinate, and implement patent research and analysis projects, including prior art searches, competitive intelligence, landscapes, patentability, freedom-to-operate and invalidity analyses, including reviewing patents and preparing summaries of findings. Draft, review, and negotiate technology and IP-related contracts, including joint development agreements, confidential disclosure agreements, material transfer agreements, license agreements, prior rights agreements, consulting services agreements and other agreements as requested. Work closely with business partners to ensure agreement terms are in alignment with expectations and requirements. Participate in Patent Management Committee meetings and coordinate with global affiliates on patent strategy, filing, prosecution, and patent management issues. Work with inventors to identify patentable subject matter and gather relevant information for the Patent Management Committee to review. Create IP training material and provide training sessions to various business units. Support the management of the company and Epredia trademark portfolio, including knockout searches, clearance work, prosecution and working with the business to obtain use samples. Update and generate reports as needed from the internal patent and trademark docketing system. Provide counsel as requested from business partners on general legal questions, e.g., contract interpretation. Work closely with engineering teams to identify opportunities to grow the patent portfolio and increase awareness of the importance of protecting IP. Assist with maintaining virtual patent marking website. Review of packaging and marketing materials from an IP perspective.

Qualification and Experience

Qualifications: Juris Doctorate from ABA accredited school. Bachelor of Science in chemical engineering, electrical engineering or related field. Registered to practice before the US Patent and Trademark Office and admitted to the Bar of at least one state. 3+ years of experience preparing and prosecuting US and international patent applications in the chemical or electrical arts; experience prosecuting software-related applications a plus. Experience with US and international trademark prosecution and trademark portfolio management. Experience providing counsel to global medical device business a plus. Exceptional interpersonal skills, highly versatile and adaptable, able to multi-task in a high-paced environment. Strong attention to detail, ability to meet deadlines and prioritize projects with minimal supervision. Excellent work ethic, teamwork and commitment to professionalism. Ability to convert IP legal issues into readily understandable business issues.

Additional info

Ref: ADC-1958

Company info

Hiring Coordinator
Ascensia Diabetes Care Holdings AG
5 Wood Hollow Rd
Parsippany, NJ 07054

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