Associate General Counsel, Intellectual Property

MSD Careers • Rockville, MD

8d • Onsite

About The Position

This position is responsible for providing legal counsel and leadership on intellectual property matters, including but not limited to patents and patent applications, trademarks, copyrights, and IP ownership and licensing aspects of various agreements.

Requirements

• Juris Doctorate degree from an accredited law school and a current license to practice before a state bar is required.
• A minimum of 10 years of legal experience combined at either the USPTO, a law firm, or an in-house position.
• Admittance to practice before the USPTO is required.
• Advanced degree in either molecular biology (or related field; PhD preferred) or computer science/engineering
• A minimum of 3 years of research or product-development experience in either molecular biology (or related field) or computer science/engineering.
• Deep understanding of patent, trademark, copyright, and trade secret law.
• Demonstrated critical thinking and analytical skills, as well as the ability to handle complex situations and demonstrate sound judgment and problem solving.
• Ability to provide effective review and feedback to other legal team members.
• Strong business acumen; capacity to learn the business rapidly and become a business partner.
• Strong intellectual capacity and high personal standards of excellence.
• Logical problem solving and demonstrated ability to organize and move project tasks forward in an orderly and structured fashion.
• Strong work ethic and demonstrated ability to manage a high-volume workload with minimal supervision.
• Excellent communications and interpersonal skills and the ability to work well within a team and to interact with all levels of management.
• Advanced scientific/technical understanding of either molecular biology (or related field) or computer science/engineering.
• Proficiency in Microsoft Office required.
• A wide degree of creativity and latitude is expected including the ability to multi-task and work productively in a demanding customer service environment with changing priorities.
• This position requires the ability to communicate and exchange information, utilize equipment necessary to perform the job, and move about the office.

Responsibilities

• Provide a high-quality level of professional, cost effective, proactive and responsive legal services to internal clients in the area of intellectual property.
• Engage in and drive detailed technical discussions with inventors on the intricacies of either molecular biological or computer science/engineering aspects of their inventions and discoveries
• Manage the company’s patent portfolio, including soliciting and evaluating invention disclosures, conducting patentability investigations, filing, prosecuting, issuing and maintaining patent applications and patents domestically and internationally in coordination with and through managing outside counsel.
• Where appropriate, enforce MSD’s intellectual property rights through investigation of competitors’ products and supporting negotiation of favorable intellectual property licenses and litigation.
• Analyze third party claims alleging intellectual property infringement by MSD’s products or services, including conducting and/or managing infringement and validity investigations and supporting negotiation of favorable intellectual property licenses and defense of MSD in intellectual property litigation.
• Provide support to legal transactional team by analyzing and commenting of IP terms of various agreements.
• Provide legal advice on obtaining copyrights, protecting trade secrets and avoiding infringement of the copyrights and trade secrets of others.
• Manage the trademark process at MSD, including the acquisition of trademarks, advising and training on mark selection and use, conducting right to use investigations, and filing, prosecuting, issuing and monitoring trademark applications and registrations in coordination with and through managing outside counsel.
• Maintain up to date knowledge of the company’s technology.
• Review company product literature, reports to customers and collaborators, and proposals to the government to ensure intellectual property in such disclosures is adequately protected.
• Meet promised deadlines for rendering advice or preparing documents, and be available when called on by management and staff.
• Proactively anticipate IP legal issues before they become problems by practicing preventive law and by early involvement.
• Provide training and written guidelines on the acquisition and preservation of intellectual property rights.
• Specific duties will vary depending upon departmental requirements

Benefits

• comprehensive benefits package to support our employees' well-being and financial security
• competitive salaries
• medical, dental, and vision coverage, along with prescription benefits
• 401(k) plan with company matching
• flexible spending accounts
• company-paid short- and long-term disability insurance as well as group life and accidental death and dismemberment insurance
• paid vacation, paid sick leave, paid holidays, and paid parental leave, along with an employee assistance program
• fitness club membership contribution, pet insurance, identity theft protection, home and auto insurance discounts, and optional supplemental life insurance

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Education Level: Ph.D. or professional degree
• Number of Employees: 251-500 employees