IP Counsel

Danaher•Chaska, MN

3d•Onsite

About The Position

The IP Counsel will partner closely with R&D and business teams to capture and protect innovation, clear the path for product freedom to operate, and ensure IP is strategically protected and leveraged in contracting. This position reports to the Senior IP Counsel and is part of the IP Legal team, which operates as an integral part of the overall legal department. The role will be an on-site role located in Chaska, MN. In this role, you will have the opportunity to support IP portfolio strategy by contributing to strategic decisions on patent filings and by managing day-to-day prosecution tasks in coordination with outside counsel. Conduct landscape and freedom-to-operate analyses, review third-party IP, and monitor competitors’ patent activity. Provide input on IP terms in NDAs, MTAs, collaboration, licensing and other vendor agreements. Support trade secret and confidential information protection by implementing and maintaining processes for safeguarding proprietary know-how and data. Act as a trusted partner to R&D, product, and business teams by embedding closely with their workflows and proactively assessing IP-related risks and opportunities.

Requirements

J.D. from an accredited law school & 4+ years of experience in patent law in the area of life sciences
Advanced degree in biology, biochemistry, or related life sciences field
Active bar membership in good standing in at least one US jurisdiction & admission to practice and in good standing before the USPTO
Substantial experience drafting patent applications and office action responses, with a strong grasp on claim strategy and how to engage with the USPTO.
Experience supporting broader patent portfolio management, including tracking and prioritizing invention disclosures, managing filing strategies, and making strategic portfolio decisions.
Experience in conducting patent landscape, freedom-to-operate (FTO), and competitive intelligence analyses to identify potential IP risks and inform client/business decision-making.

Nice To Haves

Developing, enforcing, or advising on trade secret protection strategies
Supporting IP litigation or disputes, including analyzing asserted claims, assisting with claim charting, managing internal document holds, and collaborating with outside counsel on case strategy and filings.
Experience reviewing and advising on IP-related contract provisions including NDAs, MTAs, collaboration agreements, or license agreements.
Demonstrated ability to identify and advise on complex IP risks and opportunities as they arise, providing clear strategic guidance to support client/business decision-making.

Responsibilities

Support IP portfolio strategy by contributing to strategic decisions on patent filings and by managing day-to-day prosecution tasks in coordination with outside counsel.
Conduct landscape and freedom-to-operate analyses, review third-party IP, and monitor competitors’ patent activity.
Provide input on IP terms in NDAs, MTAs, collaboration, licensing and other vendor agreements.
Support trade secret and confidential information protection by implementing and maintaining processes for safeguarding proprietary know-how and data.
Act as a trusted partner to R&D, product, and business teams by embedding closely with their workflows and proactively assessing IP-related risks and opportunities.