Senior Intellectual Property Counsel

Danaher•Boston, MA

1d•Remote

About The Position

The Senior Intellectual Property Counsel is responsible for protecting SCIEX’s innovations by procuring and managing intellectual property rights of SCIEX and managing freedom to operate thereof. This position reports to the Chief Intellectual Property Counsel and is part of the Legal Department located in Marlborough, MA and will be fully remote. In this role, you will have the opportunity to serve as trusted counsel on IP issues (e.g., invention mining, patentability, patent prosecution and freedom to operate), locally and globally, by giving solid and practical IP legal advice to various stakeholders, including business executives. You will lead outside counsel in the preparation and prosecution of patent and trademark applications for the portion of SCIEX’s portfolio that this position individually is responsible for with a focus on quality, output, and cost. You will also negotiate, draft, and review agreements such as licenses, research agreements, collaboration agreements, confidentiality agreements and material transfer agreements. Additionally, you will conduct freedom to operate assessments on emerging technology and provide educational presentations and other training on IP matters to Sciex associates.

Requirements

Juris Doctorate with excellent academic credentials from an accredited law school.
Active bar membership.
Admitted to practice, including on a limited basis, before the U.S. Patent and Trademark Office.
Experience in biology, chemistry, and physics with working knowledge of software. Alternatively, experience in software with working knowledge of life sciences.
Minimum of 7 years of relevant experience in a law firm and as in-house counsel is required, with experience managing a global IP portfolio and counseling stakeholders to business executives.

Nice To Haves

Strong process orientation, problem solving skills, and a commitment to delivering results.
Ability to perform exceptionally in fast paced, performance-oriented environment with a sense of urgency.
Lawyer skilled in the art of executive communication and appropriate escalation.
Able to command the respect of, and influence, business leaders, peers, team and outside counsel across a wide spectrum of experience and sophistication up to c-level executives.

Responsibilities

Serve as trusted counsel on IP issues (e.g., invention mining, patentability, patent prosecution and freedom to operate), locally and globally, by giving solid and practical IP legal advice to various stakeholders, including business executives.
Leads outside counsel in the preparation and prosecution of patent and trademark applications for the portion of SCIEX’s portfolio that this position individually is responsible for with a focus on quality, output, and cost.
Negotiates, drafts, and reviews agreements such as licenses, research agreements, collaboration agreements, confidentiality agreements and material transfer agreements.
Conducts freedom to operate assessments on emerging technology.
Provides educational presentations and other training on IP matters to Sciex associates.