Intellectual Property Counsel or Agent

Bedford - 180 Hartwell Road Bedford, Massachusetts 01730 United States

Country

United States

Shift

1st

Werfen

Werfen is a growing, family-owned, innovative company founded in 1966 in Barcelona, Spain. We are a worldwide leader in specialized diagnostics in the areas of Hemostasis, Acute Care Diagnostics, Transfusion, Autoimmunity, and Transplant. Through our Original Equipment Manufacturing (OEM) business line, we research, develop, and manufacture customized assays and biomaterials. We operate directly in 30 countries, and in more than 100 territories through distributors.

Our Headquarters and Technology Centers are located in the US and Europe, and our workforce is more than 7,000 strong.

Our success comes from a specific focus in these rapidly evolving diagnostic areas, our commitment to customers, and our dedication to innovation and quality. We’re passionate about providing healthcare professionals the most valuable and complete solutions to improve hospital efficiency and enhance patient care.

Job Summary

The Intellectual Property (IP) Counsel is responsible for providing high quality IP service to the entire Werfen organization. The position reports directly to the Chief IP Counsel.

The IP counsel is responsible for strategically establishing patent portfolios in different business areas, perform freedom-to-operate, assist with IP due diligence, support internal clients and manage outside counsel, and work closely with both the business and the Chief IP Counsel on a daily basis.

Key Accountabilities

• Initiate, improve, and implement IP strategies and processes across Werfen technology centers to optimize IP asset procurement
• Identify strengths and weaknesses and set priority to selected technical areas for IP procurement
• Update databases and provide IP statistics information to business
• Continue to learn the ever changing IP laws and practices in major jurisdictions and apply such knowledge effectively in daily work
• Perform freedom-to-operate studies and provide high quality work products to business
• Effectively, efficiently, and independently manage outside counsel to ensure high quality prosecution work product within a reasonable budget
• Perform trade secret survey and strategize and implement trade secret policies adapted to local laws within Werfen entities
• Assist with trademark portfolio management
• Assist with IP related agreements
• Support software licensing matters and other day-to-day IP related matters, including responding to client inquries or perform other assigned tasks as they arise
• Performs other duties and responsibilities as assigned.

Networking/Key relationships

Establish and maintain good working relationships with marketing, R&D, and other stakeholders within the business.

Minimum Knowledge & Experience required for the position:

• Bachelors degree in science or engineering, preferably in biological sciences, required.
• JD from an accredited U.A. law school and membership in good standing of state bar re-quired.
• Admission to practice before the U.S. Patent & Trademark Office required
• Minimum of 5 years of relevant experience gained in a law firm required. In-house experi-ence is a plus but is not required.
• Solidly trained in patent drafting and prosecution, and currently able to independently draft and prosecute without senior attorney’s supervision.
• Well-versed in patent law in major jurisdictions in software, hardware, and diagnostic as-says.
• Substantial freedom-to-operate (FTO) experiences, including searches, evaluations, and work product generation.
• Preferred training or experience relevant to life sciences, chemical analysis, or materials characterization and strong technological aptitude and inclination to learn and work with a range of technologies.

Management has the discretion of substituting relevant work experience for a degree and/or making exceptions to the years of experience requirement.

Skills & Capabilities:

• Proven ability to establish a high degree of credibility, respect and trust at all levels including with technologists, scientists, managers and executives.
• Strong professional and personal communication skills, capable of dealing with a wide range of people.
• Be accountable for the responsabilities taken or work assigned.
• Effective planning and organizing skills to prioritize key areas of responsibility, tasks and projects. Ability to prioritize and manage multiple projects.
• Strong team player who is both committed and flexible.
• Combination of in-depth legal knowledge and commercial awareness of the business issues facing the organization and the ability to deal with problems in a practical manner.
• The successful candidate must also exhibit the highest integrity, excellent judgment, and the ability to proactively recognize and effectively communicate legal issues to patent, legal, and senior management
• Be energized by challenging and interesting legal work, technical and scientific matters, and novel business problems.
• Be keenly…