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Posted Aug 06
Full Time
Carlsbad, California

IP Counsel, Genetic Analysis Instrumentation and Software

Thermo Fisher


Thermo Fisher Scientific Inc. (NYSE: TMO) is the world leader in serving science, with revenues of $25 billion, and over 70,000 employees in 50 countries. Our mission is to enable our customers to make the world healthier, cleaner and safer by being the world leader in serving science. When you join us at Thermo Fisher Scientific, you’ll be part of a smart, driven team that shares your passion for exploration and discovery.

Job Description

Thermo Fisher’s dynamic and fast-growing Genetic Sciences Division (GSD) is seeking a motivated Patent Attorney to support innovation capture and IP risk mitigation for their growing medical and analytical devices business, including our COVID testing business as well as other genetic analysis tools with growing relevance beyond the laboratory. GSD supports a diverse range of products including qPCR (TaqMan), microarrays (Affymetrix) and genetic sequencing, which drive its vision to offer rapid and affordable genetic testing across the world.

We are looking for applicants who possess a strategic mentality, a strong technical background, and established skills in drafting and prosecuting Instrumentation and Software inventions. You will be joining a hard-working IP team that prides itself on delivering strong, defensible patents and counseling solutions.

Location

Carlsbad, CA, or

San Francisco, CA

Key Responsibilities:

  • Working directly with R&D teams and educating them on patentable inventions. Interact with and provide legal and strategic counsel to senior management, engineers and other functional organizational leadership.
  • Developing a strategic framework for capturing and protecting sophisticated innovation.
  • Developing and implementing a framework for evaluating prosecution return on investment
  • Developing a team of internal patent agents as well as outside counsel in their efforts for the company
  • Support the company IP team in IP Group-wide initiatives and in developing a more flexible company-wide IP support model.
  • Conduct proactive analysis of competitor and industry IP portfolios; lead and improve processes for tracking innovations and competitor IP activity.
  • Navigate freedom-to-operate issues.
  • Conduct employee training sessions on the protection of innovations through the patent process, standard methodologies for maintaining confidential business information, and the overall development of intellectual property assets;
  • Resolve and/or support resolution of business unit level disputes
  • Provide support to our litigation team on any IP litigations relating to GSD’s device-related product portfolio


Required Experience and Skills:

  • JD from an accredited university
  • Four or more years of experience preparing and successfully prosecuting U.S. and International patent applications related to instrumentation and software inventions.
  • M.S./Ph.D. in Chemical, Biomedical, Mechanical, Electrical Engineering or a related field, with experience in the life sciences.
  • Admission to a state bar and registration to practice before the U.S. Patent and Trademark Office.

Preferred Experience:

  • Background working with medical devices and instrumentation used for genetic analysis
  • Background or experience with instrumentation and data analysis/interpretation/visualization software is a plus.
  • Experience at an outstanding patent law firm or AmLaw 200 firm.
  • Experience with European or other international patent protection regimes
  • Familiarity with FDA medical device regulations and related approval processes.
  • People management experience

The successful candidate will have the following characteristics.

  • Business Perspective - Ability to learn and understand significant business drivers.
  • Demonstrated success leading outside counsel, working efficiently, controlling costs, and exercising sound business and legal judgment.
  • Self-motivated / driven to succeed - High level of initiative and ability to work autonomously. Must strive to consistently excel and look for opportunities to improve on existing processes or methods.
  • Team oriented / strong interpersonal skills - Must be comfortable working in dynamic and diverse multi-national teams.
  • Effective communicator - Ability to communicate efficiently across teams, functions and global regions. Skilled trainer with the ability to clearly convey concepts in a retainable and engaging manner.
  • Principled - Possesses a strong sense of ethics and integrity.
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