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Job ID :
Location :
US - California - Carlsbad
Job Description

Position Overview:

Under the direction of the Division IP Counsel, the IP Counsel will support the Biosciences Division’s Cell Biology and Sample Preparation 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.

Essential Functions:

  • Serve as primary IP contact for the Biosciences Division’s Cell Biology and Sample Preparation groups, 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 cell biology or biochemistry 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;
  • Experience in international IP law is preferred.

Thermo Fisher Scientific is an EEO/Affirmative Action Employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, disability or any other legally protected status.
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