Associate Legal Director, Intellectual Property

Boston ScientificGeorgetown, MA
1d$148,800 - $282,700

About The Position

This IP Counsel will support the company's Urology business segment and provide legal advice and service on patents, copyrights, trademarks, licensing and related agreements. This includes evaluating patents and potential product infringement issues, overseeing outside counsel's preparation of patent applications and office action responses for filing in the U.S. Patent Office and foreign patent offices, participating in intellectual property aspects of mergers and acquisitions, representing the company in matters relating to intellectual property law, and providing other general legal advice where required. This role is based in Marlborough, Massachusetts, and supports franchise business activities in Minnesota and abroad.

Requirements

  • JD and active membership to a United States bar in good standing
  • Registered US Patent Attorney
  • Minimum of 7+ years legal experience at a law firm and/or in house legal department
  • Minimum of 2+ years experience managing U.S. patent prosecution matters
  • Experience with intellectual property litigation and/or mergers and acquisitions
  • Proven ability to draft, review, and negotiate intellectual property agreements

Nice To Haves

  • Educational or professional background in chemistry or software
  • Experience supporting legal matters in the medical device or life sciences sector

Responsibilities

  • Directing the company's patent, copyright, trademark and intellectual property protection.
  • Directing the preparation and prosecution of the U.S. and foreign patent and trademark applications through outside counsel.
  • Preparing intellectual property acquisition or license agreements with third parties related to M&A transactions, acquisition, and licensing of patents and technology.
  • Reviewing third party patent portfolios for possible acquisition or licensing analysis.
  • Reviewing third party patents for product freedom-to-operate and obtaining appropriate opinions from outside counsel.
  • Providing legal advice in other areas such as: preparing and reviewing consulting agreements, confidentiality agreements, marketing promotional material, and other agreements.
  • Reviewing status of outside counsel work by meeting, communicating, and reviewing documentation ensuring the work, methodology, and costs meet the company's expectations.
  • Facilitating Patent Review Board meetings by leading discussions, managing action items and delegating responsibility for follow-up items to committee members ensuring resolution of agenda topics.
  • Providing IP training to BSC employees.
  • Managing and/or supervising the work product of IP legal professionals.

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What This Job Offers

Job Type

Full-time

Career Level

Director

Education Level

Ph.D. or professional degree

Number of Employees

5,001-10,000 employees

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