Intellectual Property Counsel

Hologic • San Diego, CA

14h • $183,000 - $325,000 • Onsite

About The Position

Hologic is seeking Intellectual Property (IP) Counsel to support its fast-paced Diagnostic Solutions Division. IP Counsel will be responsible for advising internal business and legal partners, as well as managing outside counsel on a wide range of intellectual property issues involving patents, trademarks, trade secrets, and copyrights. This position is a fully onsite role based in San Diego, California and will report to Senior Intellectual Property Counsel for the Diagnostic Solutions Division.

Requirements

• Demonstrated experience in developing and maintaining a patent portfolio
• Experience in conducting and reviewing patentability and freedom-to-operate searches
• At least minimal experience negotiating and drafting agreements having an IP component
• Possession of excellent interpersonal, communication, and collaborative skills with the ability to impact and influence others at all levels
• Possession of organizational skills and the ability to manage numerous projects and conflicting demands
• Business acumen and ability to distill complex legal and technical concepts into practical legal advice
• JD from an accredited law school
• Member in good standing of a state bar and registered to practice before the USPTO
• A Bachelor of Science in a biological science and
• An advanced degree in a biological science, or
• At least 2 years of practical laboratory experience
• 3-7 years of experience as a registered patent attorney

Nice To Haves

• Experience managing a trademark portfolio is desired

Responsibilities

• Develop and manage a strategic global intellectual portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic’s business objectives
• Draft and prosecute patent applications in the biological and chemical arts
• Conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases
• Assist with M&A due diligence, including contract reviews, portfolio assessments, and freedom-to-operate analyses
• Manage IP litigation and administrative proceedings
• Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements
• Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations
• Review marketing and promotional literature
• Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive intelligence, commercial activities, and licensing opportunities
• May participate in conducting periodic training for employees on invention disclosures, litigation preparation, confidentiality, the safeguarding of trade secrets, and other intellectual property topics

Benefits

• We offer a competitive salary and annual bonus scheme, one of our talent partners can discuss this in more detail with you.
• We are committed to making Hologic the company where top talent comes to grow.
• For you to succeed, we want to enable you with the tools and knowledge required and so we provide comprehensive training when you join as well as continued development and training throughout your career.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Education Level: Ph.D. or professional degree
• Number of Employees: 5,001-10,000 employees