Assistant General Counsel, Intellectual Property

Balt Group•Boston, MA

1d•Onsite

About The Position

Balt is seeking an Assistant General Counsel, Intellectual Property (IP) to manage all aspects of the global intellectual property function. This role involves providing legal advice on patents, trademarks, and trade secrets, managing IP disputes, transactions, and due diligence. The ideal candidate will have significant experience in IP law within the medical device industry and be adept at advising business and R&D executives.

Requirements

J.D. degree from an accredited law school and 10+ years of legal experience, preferably 5+ in an in-house setting.
Registered Patent Attorney; current member in good standing of a state bar, preferably California and/or Massachusetts.
BS/MS/PhD in engineering or other technical degree relevant to the medical device industry required.
Experience with patent prosecution, technology transactions, and IP litigation in previous roles.
Strong communication, organizational and analytical skills.
Ability to work collaboratively across organizational functions.
Ability to balance and prioritize multiple tasks, and to respond effectively to rapidly changing priorities and deadlines.
Ability to travel domestically within the US and internationally (primarily to France) up to 20% of time.
Demonstrated ability to develop, implement, and manage global IP strategies aligned with business, R&D, product development, and commercial objectives.
Extensive experience developing and managing global patent portfolios, including invention harvesting, patentability assessments, patent prosecution strategy, portfolio optimization, and maintenance decisions.
Strong experience conducting and overseeing freedom-to-operate, patent landscape, validity, infringement, and risk assessments in support of product development and commercialization.
Deep understanding of intellectual property issues affecting medical devices and other highly technical, regulated products, including experience partnering with engineering, R&D, clinical, regulatory, and commercial teams.
Significant experience managing U.S. and international patent prosecution, including effectively directing and managing outside patent counsel.
Experience developing strategy for and managing patent, trademark, trade secret, and other IP disputes and litigation, including oversight of outside litigation counsel.
Advanced drafting and negotiation skills involving patent and technology licenses, joint development agreements, research and collaboration agreements, university licenses, confidentiality agreements, and other IP-related commercial agreements.
Experience developing, implementing, and maintaining trade secret protection programs, policies, controls, and employee education.
Experience conducting intellectual property due diligence and assessing IP-related risks in mergers, acquisitions, investments, licensing transactions, and other corporate development activities.
Ability to monitor competitor patent activity, emerging technologies, and relevant industry developments and translate findings into actionable business and IP recommendations.
Proven ability to collaborate effectively with R&D, engineering, operations, corporate development, commercial, and executive leadership teams and provide practical, business-oriented legal advice.
Exceptional written and verbal communication skills, with the ability to explain complex technical and legal concepts clearly and provide concise, actionable recommendations to senior executives and other stakeholders.
Demonstrated ability to lead the IP function, manage outside counsel relationships, establish priorities, oversee legal spend, and effectively manage budgets.
Strong analytical and strategic judgment with the ability to identify, assess, prioritize, and communicate complex intellectual property and business risks.
Ability to independently manage multiple complex matters, competing priorities, and time-sensitive projects in a fast-paced, global environment.
Ability to develop and deliver effective intellectual property training for technical, business, and other employee audiences.
Ability to work effectively across geographic locations, cultures, and time zones, including collaboration with teams in the United States and France.

Responsibilities

Execute a strategy to safeguard the company’s intellectual property assets.
Implement and lead IP strategy and establish positive working relationships with R&D, engineering, and operations functions, serving as an advisor on a variety of IP-related issues.
Manage outside counsel and budget in the development of a strategic, global patent and trademark portfolio.
Conduct patentability and freedom to operate assessments.
Manage the company’s trade secrets program.
Manage IP disputes and other non-IP litigation.
Negotiate and draft complex intellectual property agreements, including patent and technology license agreements, joint development agreements, research collaboration agreements, and university licenses.
Support Balt’s corporate development activities in IP due diligence and licensing.
Actively monitor industry and technology areas through competitive surveillance.
Provide training to Company employees on all intellectual property matters.