IP Counsel

San Jose, CA
Full Time
04-30-2019
Job #: MOL002395 Exp.: 5+ Years
Description:
Join Molecular Devices and be part of the team bringing our innovative solutions for biologic research to market!

The IP Counsel will provide strategic advice on a wide range of intellectual property matters relating to Molecular Devices worldwide R&D program and commercial operations. The IP Counsel will work closely with senior scientific staff and business representatives to identify patentable subject matter, develop and execute appropriate IP portfolio strategy, and monitor competitor IP positions. In addition, the IP Counsel will conduct freedom to operate assessments, and advise in due diligence investigations and IP litigation.

The successful candidate will have an excellent understanding of US and foreign patent law and possess the ability to evaluate and balance both legal and business factors when providing advice.
  • Managing outside counsel in the preparation of patent applications and international patent prosecution. Some direct US patent prosecution.
  • Negotiating, drafting and reviewing agreements such as licenses, research agreements, collaboration agreements, confidentiality agreements and material transfer agreements.
  • Conducting freedom to operate studies on emerging technology.
  • Conducting due diligence IP investigations.
  • Advising senior legal and business stakeholders on IP litigation and other adversarial proceedings, such European Oppositions and US IPR proceedings.
  • Managing all aspects of the Molecular Devices trademark portfolio.
  • Providing educational presentations and other training on IP matters to Molecular Devices employees.
  • Occasional domestic and international travel may be required.
Molecular Devices is an equal opportunity employer. We evaluate qualified applicants without regard to race, color, national origin, religion, gender, age, marital status, disability, veteran status, sexual orientation, gender identity, or any other characteristic protected by law.

Qualifications
  • J.D. with excellent academic credentials from an accredited law school.
  • Active bar membership in at least one US jurisdiction.
  • Admitted to practice before the US Patent and Trademark Office.
  • An advanced degree in biology, chemistry, physics or other field relevant to the life sciences is strongly preferred.
  • 5+ years of relevant experience in either a law firm or as in-house counsel, preferably in the life sciences industry.
  • Approaches IP with a strategic mindset by anticipating future business, competitive and legal risks, and looks for creative solutions and opportunities.
  • Strong negotiation and communication skills; able to simply explain complex IP issues in business terms.
  • Demonstrated high integrity and ethics in all dealings, non-political in conduct, while understanding internal and external dynamics.

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