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Associate Ip Counsel

Full-time 28 views
Company Thermo Fisher Scientific Inc. Location Carlsbad, CA, United States



3-8 yrs required



Nov 07, 2022

Feb 20, 2023

Jun 15, 2022


Associate IP Counsel
Responsibilities: Working directly with R&D teams educating them on patentable inventions. Interacting with and providing legal and strategic guidance to senior division level business management, senior scientists, and other functional organizational leadership. Developing a principled and strategic framework for capturing innovation and protecting complex molecular biology assays, methods and reagents innovation for the division worldwide. Providing IP legal support to our companion diagnostics business development team to support our existing and developing companion diagnostics partnering programs. Developing and implementing a framework for evaluating prosecution ROI. Managing outside counsel in their efforts for the company. Support the company IP team in IP Group-wide initiatives and in developing a more flexible company-wide IP support model. Conduct proactive in-depth analysis of competitor and industry IP portfolios; manage and improve processes for tracking innovations and competitor IP activity. Navigate freedom-to-operate issues. Conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, and the overall development of intellectual property assets. Resolve and/or support resolution of business unit-level and division-level legal disputes and transactional negotiations. When necessary, provide support to our internal litigation team on any IP litigations relating to CSD’s molecular biology and reagent-related product portfolio.

Qualification and Experience

Qualifications: BS/MS/Ph.D. in Molecular Biology, Biology, Immunology, or a related field consistent with the key responsibilities. Admission to a state bar and registration to practice before the U.S. Patent and Trademark Office. Should have 3-8 years of experience preparing and successfully prosecuting the U.S. and international patent applications related to molecular biology and reagents or related experience and/or navigating complex patent-related transactional, risk mitigation, and dispute resolution projects. Experience evaluating pre-launch products for innovation capture and for freedom to operate. Preferred Qualifications: Experience at a premier patent law firm. Experience with European or other international patent protection regimes. Familiarity with FDA regulations and related approval processes for diagnostic assays. Background working with assays and reagents used for genetic analysis, including next-generation sequencing. Background or experience with supporting IP disputes is a plus.

Additional info

Job ID: 202977BR

Company info

Hiring Coordinator
Thermo Fisher Scientific Inc.
5823 Newton Dr
Carlsbad, CA 92008

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