When you’re part of the team at Thermo Fisher Scientific, you’ll do important work that supports a powerful mission. With revenues of $18 billion and a track record of stability and consistent growth, we’re uniquely able to give our people the resources and opportunities to make significant contributions to the world. With our scale and the variety of our business lines, when you join our team, you may work on the kind of complex projects you can’t find anywhere else.
Under the direction of the Division IP Counsel, the IP Counsel will support the Genetic Sciences Division’s instrument programs, primarily drafting and prosecuting patent applications, providing freedom to operate clearance, and managing the IP portfolio in a business-conscious manner. There also will be opportunities to work on diverse legal matters including licensing, litigation support, and dispute resolution. The IP Counsel also will provide support to the global IP Department on a range of matters.
- Serve as primary IP contact for the Genetic Sciences Division’s instruments platform, providing IP expertise that enables the business to grow;
- Demonstrated ability to draft patent applications, amendments, legal, and business documents;
- Demonstrated ability to efficiently and strategically prosecute patent applications;
- Ability to analyze patentability and patent freedom-to-operate searches;
- Draft or review of a range of commercial agreements, including third party OEM and supply contracts, technology in-licenses, technology out-licenses, collaboration agreements, joint development agreements, licensing term sheets, and other commercial agreements implicating intellectual property rights, as needed;
- Provide counsel to other functions such as R&D, general legal, licensing, business development, finance, product management, and regulatory;
- Perform analyses on legal rights, obligations, and strategies to help the Company achieve its business goals;
- Participate in due diligence and other M&A activities;
- Provide timely and actionable counsel to business counterparts;
- Manage outside counsel; and,
- Train internal customers on IP policy, procedure, and risk management.
Minimum Education and Experience:
- B.S. or advanced degree and industry experience in engineering or software preferred;
- J.D. degree and an active license to practice in at least one US jurisdiction;
- USPTO registration with 5+ years of experience in US patent prosecution and portfolio management;
- Excellent writing, negotiation, and communication skills;
- Experience in US patent litigation, European patent practice, patent portfolio development, licensing, and enforcement in a corporate setting is preferred; and,
- Experience in international IP law is preferred.
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