Job Details

Electrical Engineering Attorney / Software Attorney / Biotechnology Attorney / Intellectual Property - Patent - Life Sciences General Attorney / Medicine Attorney / Pharmacology Attorney in Rockville, MD

Organization Type

In-House

Job Type

Attorney

Date Last Verified

Mar 03, 2021

Posted on

Feb 22, 2021

Years of Experience

Min 3 yrs required

Location

Rockville, MD, United States
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Software
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biotechnology
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Intellectual Property - Patent - Life Sciences General
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Medicine
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Pharmacology
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Director, IP Corporate Counsel
The candidate will identify and pursue strategies to capture innovation especially in digital health and medical device areas, including communicating IP guidance and risks to IP, legal and business teams. Develop and execute far-sighted IP strategy for projects and portfolios worldwide in line with company business goals. Work on business development deals or coordinate response to legal changes. Create and implement global strategic approaches toward building patent portfolios and providing value to business. Prepare and prosecute patent applications in the US and abroad, including effectively managing outside counsel as needed. Manage litigation work by outside counsel in the US and abroad. Provide IP and technical analysis in support of patent litigations. Manage all aspects of intellectual property estates in firm’s core and developmental therapeutic areas, such as digital health, digital therapeutics, and medical devices, including bioinformatics, medical systems, databases, data search and retrieval, and mobile applications. Research, evaluate and monitor patent portfolios of third parties, and develop FTO strategy. Develop and communicate IP guidance to stakeholders across the business, including within Clinical, Medical Affairs, Business Development, Commercial, Marketing, and Legal Affairs. Support intellectual property-related transactional work. Develop an understanding of the firm’s technology, scientific and business strategy to develop and prioritize IP strategies and to identify IP-related risks; advise company management and stakeholders on IP strategies and risks. Perform other legal, administrative and corporate duties upon request. Work collaboratively and strategically with members of IP department in related companies. Review and negotiate contracts for collaboration with third parties regarding IP matters. Develop and deliver multi-mode communications that convey a clear understanding of the unique needs of different audiences. Build partnerships and works collaboratively with others to meet shared objectives.

Qualification and Experience

The candidate should be an undergraduate. An advanced degree is preferred in the life sciences, clinical sciences, bioinformatics engineering; or related discipline. Should have Doctor of Jurisprudence (J.D.) or equivalent degree. Should be a Licensed US Attorney, USPTO Registration Number. Should have 3+ years of relevant experience with technology and/or life science industry in IP portfolio development, including preparing patents for electrical engineering, software, mobile computer systems, database architectures, data science, and artificial intelligence and machine learning, preferably in the context of clinical medicine, medical devices, and/or digital health. In-house experience including reviewing and negotiating contracts for collaboration with third parties regarding IP matters is required. Experience in the biotech and/or pharmaceutical industry is also preferred. Experience of managing external service providers is an added advantage. Experience with global patent prosecution is required. Experience with re-examination, inter partes reviews proceedings, and litigation is strongly preferred.

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