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Intellectual Property Counsel, (Endoscopy, Urology)

Posted Nov 13
Full Time
HybridMarlborough, Massachusetts

About the role:

This IP Counsel will support the company’s Endoscopy and Urology business segments and provide legal advice and service on patents, copyrights, trademarks, licensing, and related agreements. This includes evaluating patents and potential product infringement issues, overseeing outside counsel's preparation of patent applications and office action responses for filing in the U.S. Patent Office and foreign patent offices, participating in intellectual property aspects of mergers and acquisitions, representing the company in matters relating to intellectual property law, and providing other general legal advice where required. 
 
Your responsibilities include:

  • Directing the company's patent, copyright, trademark and intellectual property protection.
  • Directing the preparation and prosecution of the U.S. and foreign patent and trademark applications through outside counsel.
  • Conducting IP due diligence and supporting negotiation and execution of intellectual property acquisition or license agreements with third parties related to M&A transactions, acquisition, and licensing of patents and technology.
  • Reviewing third party patent portfolios for possible acquisition or licensing analysis.
  • Reviewing third party patents for product freedom-to-practice issues and preparing or obtaining appropriate opinions from outside counsel.
  • Providing legal advice in other areas such as: preparing and reviewing consulting agreements, confidentiality agreements, marketing promotional material, and other agreements.
  • Reviewing status of outside counsel work by meeting, communicating, and reviewing documentation ensuring the work, methodology, and costs meet the company’s expectations.
  • Facilitating Patent Review Board meetings by leading discussions, managing action items and delegating responsibility for follow-up items to committee members ensuring resolution of agenda topics.
  • Providing IP training to BSC employees.
  • Potentially managing and/or supervising the work product of more junior counsel and/or other IP legal professionals.
     

Requirements:

  • JD admitted to a state bar in good standing
  • Registered U.S. Patent Attorney
  • Strong academic background
  • 8-10+ years legal experience with reputable law firm or corporate legal department
  • Minimum 2-5 years patent prosecution experience
  • Some IP litigation and M&A experience
  • Experience drafting and negotiating IP agreements
  • Ability to effectively communicate with R&D team, business partners, and senior leaders
  • Ability to collaboratively work in cross-functional teams

 
Preferred Qualifications:

  • Medical device experience preferred
  • A chemical or software background is beneficial but not required

 

As a leader in medical science for more than 40 years, we are committed to solving the challenges that matter most – united by a deep caring for human life. Our mission to advance science for life is about transforming lives through innovative medical solutions that improve patient lives, create value for our customers, and support our employees and the communities in which we operate. Now more than ever, we have a responsibility to apply those values to everything we do – as a global business and as a global corporate citizen.

So, choosing a career with Boston Scientific (NYSE: BSX) isn’t just business, it’s personal. And if you’re a natural problem-solver with the imagination, determination, and spirit to make a meaningful difference to people worldwide, we encourage you to apply and look forward to connecting with you!

At Boston Scientific, we recognize that nurturing a diverse and inclusive workplace helps us be more innovative and it is important in our work of advancing science for life and improving patient health. That is why we stand for inclusion, equality, and opportunity for all. By embracing the richness of our unique backgrounds and perspectives, we create a better, more rewarding place for our employees to work and reflect the patients, customers, and communities we serve. Boston Scientific is proud to be an equal opportunity and affirmative action employer.

Boston Scientific maintains a drug-free workplace. Pursuant to Va. Code § 2.2-4312 (2000), Boston Scientific is providing notification that the unlawful manufacture, sale, distribution, dispensation, possession, or use of a controlled substance or marijuana is prohibited in the workplace and that violations will result in disciplinary action up to and including termination.

Please be advised that certain US based positions, including without limitation field sales and service positions that call on hospitals and/or health care centers, require acceptable proof of COVID-19 vaccination status.  Candidates will be notified during the interview and selection process if the role(s) for which they have applied require proof of vaccination as a condition of employment.  Boston Scientific continues to evaluate its policies and protocols regarding the COVID-19 vaccine and will comply with all applicable state and federal law and healthcare credentialing requirements.   As employees of the Company, you will be expected to meet the ongoing requirements for your roles, including any new requirements, should the Company’s policies or protocols change with regard to COVID-19 vaccination.

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