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Boston Scientific Senior Intellectual Property Counsel Director 
United States, Massachusetts, Marlborough 
837503977

Yesterday


Your responsibilities include:

  • 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