Job Details

IP Lawyer

Company name

Foundation Medicine, Inc.

Organization Type

In-House

Job Type

Attorney

Date Last Verified

Jul 16,2019

Valid Through

Oct 29,2019

Posted on

Jan 07,2019

Years of Experience

5-7 yrs required

Location

Cambridge, MA, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biochemistry
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biology
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Molecular Biology
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Profile

IP Lawyer
Duties: Leading the strategy and tactics to build and maintain a strong IP portfolio in support of molecular information business. Overseeing the prosecution strategy for patent and trademark portfolios. Identifying patentable inventions through frequent interactions with the R&D team. Providing strategic direction to and overseeing outside counsel on patent filing and prosecution matters. Facilitating the drafting of new patent applications and responding to office actions. Reviewing technical and scientific manuscripts, posters, and other materials intended for publication for potential impact on the patent portfolio. Educating and advising on IP issues and good practices. Supporting the provision of IP-related opinions in support of R&D programs and business development opportunities. Advising the business and legal teams on IP-related aspects of business and transactions. Coordinating with litigation counsel to protect and enforce IP rights and defend against IP-related litigation.

Qualification and Experience

Qualifications: PhD in biology, molecular biology, biochemistry or similar field. JD Degree required. Admitted to practice in the United States Patent and Trademark Office and at least one state.5-7 years of legal experience prosecuting patents and advising life science companies on IP related matters. Will have worked on prosecution and IP strategy for life sciences companies at a top tier law firm and/or in a corporate legal department. Knowledge of domestic and international laws, regulations, and processes for patents and trade-secrets. Additional knowledge and familiarity with trademark and copyright law is a plus. Significant experience prosecuting active and complex patent portfolios in the diagnostic and/or molecular biology space. Ability to engage with and advise both scientific leaders actively engaged in developing FMI’s new products and methods and the business leaders commercializing these technologies. Sound business judgment and strong oral and written communication skills, including the ability to simplify complex legal and scientific concepts for audiences with varying levels of fluency in those areas. Ability to negotiate and draft agreements with IP implications (e.g., CDAs, MTAs, research agreements, licenses, etc.) is a strong plus. Able to balance a variety of projects with deadline pressure and limited supervision, identify and escalate legal issues when needed, and work collaboratively with scientific, business and legal colleagues. deep experience in patent prosecution and IP strategy in the life sciences industry. Familiarity handling a variety of patent-related issues, including counseling on IP aspects of commercial and strategic transactions, advising on litigation, and assisting in licensing negotiations. Must be able to work in a dynamic, evolving and fast-paced work environment, with the confidence and abilities to work independently and to interact successfully with internal clients and external parties.

Additional info

Req Number: 2018-2066

Company info

Hiring Coordinator
Foundation Medicine, Inc.
150 Second Street
Cambridge, MA 02141

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