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.
Conducting IP due diligence and supporting negotiation and execution of 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-practice issues and preparing or 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 and raising IP awareness across the business through other outreach opportunities.
Potentially managing and/or supervising the work product of more junior counsel and/or other IP legal professionals.
Requirements:
JD admitted to a state bar in good standing
Registered U.S. Patent Attorney
Strong academic background
12+ years legal experience with reputable law firm or corporate legal department
Minimum 2+ years patent prosecution experience
Some IP litigation and M&A experience
Experience drafting and negotiating IP agreements
Excellent written and verbal communication skills, and the ability to communicate effectively with a wide variety of internal and external stakeholders including legal, R&D, marketing, outside counsel, senior leaders, and third-party contacts
Action-oriented and able to take on new opportunities and tough challenges with a sense of urgency, high energy, and enthusiasm
Preferred Qualifications:
Medical device experience preferred
Law firm and in-house experience preferred
Experience in patent analytics, AI tools, docket management tools, and/or database searching