Intellectual Property Counsel

Key Responsibilities

• Develop and manage a strategic global intellectual portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic’s business objectives
• Draft and prosecute patent applications in the biological and chemical arts
• Conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases
• Assist with M&A due diligence, including contract reviews, portfolio assessments, and freedom-to-operate analyses
• Manage IP litigation and administrative proceedings
• Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements
• Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations
• Review marketing and promotional literature
• Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive intelligence, commercial activities, and licensing opportunities
• May participate in conducting periodic training for employees on invention disclosures, litigation preparation, confidentiality, the safeguarding of trade secrets, and other intellectual property topics

Qualifications

• Demonstrated experience in developing and maintaining a patent portfolio
• Experience in conducting and reviewing patentability and freedom-to-operate searches
• At least minimal experience negotiating and drafting agreements having an IP component
• Possession of excellent interpersonal, communication, and collaborative skills with the ability to impact and influence others at all levels
• Possession of organizational skills and the ability to manage numerous projects and conflicting demands
• Business acumen and ability to distill complex legal and technical concepts into practical legal advice

Education and Experience

• JD from an accredited law school
• Member in good standing of a state bar and registered to practice before the USPTO
• Bachelor of Science in Biology, Chemistry, or Biomedical Engineering
• Advanced degree in a biological science, or
• At least 2 years of practical laboratory experience
• 3-7 years of experience as a registered patent attorney