Lead Intellectual Property Counsel

Job Summary

The Lead Intellectual Property Counsel will join ZOLL’s growing team of in-house IP professionals and be based at the company’s headquarters in Chelmsford, Massachusetts, with hybrid work arrangements available. In this role, the individual will have primary responsibility for strategically developing and managing ZOLL’s global patent portfolio in support of the Acute Care Technology Division.

Responsibilities

• Strategically develop and manage ZOLL’s global patent portfolio in support of the Acute Care Technology Division
• Partner closely with the Head of Intellectual Property for the Acute Care Technology Division to manage IP risk, conduct product clearance analyses, support M&A due diligence, and enhance IP-related processes
• Serve as a trusted strategic advisor to business leaders and collaborate closely with engineers and technical teams to identify, evaluate, and protect innovation
• Strategic patent portfolio management which includes interfacing with business leaders concerning IP matters, preparation and prosecution of patent applications, managing brainstorming sessions, preparation of new ideas for consideration by ZOLL’s IP review committee, product clearance and intellectual property due diligence

Essential Functions

• Drafting and prosecuting patent applications in-house, as well as overseeing and guiding external counsel
• Understanding, analyzing, and communicating complex technologies in oral and written form
• Strong interpersonal skills and ability to communicate clearly and concisely
• Strong skills in patent searching and monitoring; experience as a Patent Examiner is a plus
• Experience in managing patent portfolios, as in-house or law firm patent counsel
• Experience in strategic management of patent portfolios is strongly preferred
• Experience with intellectual property due diligence, strategic IP counseling and product clearance is strongly preferred
• Experience managing or advising on trademarks is optional and a plus

Physical Demands

• Standing - Occasionally
• Walking - Occasionally
• Sitting - Constantly
• Talking - Occasionally
• Hearing - Occasionally
• Repetitive Motions - Frequently

Required/Preferred Education And Experience

• Bachelor's Degree with 10+ years of relevant experience or Graduate Degree (Masters or above) with 5+ years of relevant experience
• Registration to practice before the U.S. Patent and Trademark Office
• Background in electrical engineering, mechanical engineering, biomedical engineering, computer science/software and/or medical devices
• At least 5-10 years of experience in preparing and prosecuting patent applications with a law firm or corporation, including drafting patent applications in coordination with inventors
• Experience in managing patent portfolios, as in-house or law firm patent counsel
• JD with 5+ years of relevant experience

Knowledge, Skills And Abilities

• Ability to understand, analyze, and communicate complex technologies in oral and written form
• Strong interpersonal skills and ability to communicate clearly and concisely
• Strong skills in patent searching and monitoring; experience as a Patent Examiner is a plus
• Experience in strategic management of patent portfolios is strongly preferred
• Experience with intellectual property due diligence, strategic IP counseling and product clearance is strongly preferred
• Experience managing or advising on trademarks is optional and a plus