Senior Director, Intellectual Property Counsel
Posted on Apr 6, 2021 by Foundation Medicine, Inc.
The Intellectual Property (IP) Attorney oversees legal matters relating to FMI's molecular information intellectual property portfolio. This position manages the implementation of, and contributes to, the prosecution strategy for worldwide patent and trademark portfolios and is responsible for identifying patentable inventions through frequent interactions with the Research and Development (R&D) Team. In the scope of this position is engaging with and advising a variety of staff including scientific leaders responsible for developing FMI's new products and the business leaders commercializing these technologies. Frequent matters the incumbent handles are patent preparation and prosecution, advising on patentability and freedom-to-operate, and participating in ongoing litigation matters to protect and enforce FMI's intellectual property rights.
Prosecute US and foreign applications in biotechnology/technology areas.
Identify patentable inventions through frequent interactions with the R&D team.
Conduct patentability and freedom-to-operate analyses, and render opinions on validity, non-infringement and patent avoidance of third-party patents.
Review technical and scientific manuscripts, posters, and other materials intended for publication for potential impact on the patent portfolio.
Educate and advise the business on IP issues and good practices.
Counsel internal partners on IP-related aspects of business and transactions.
Support patent litigations and post issuance proceedings such as post grant reviews, inter partes reviews, and oppositions.
Travel for work on intellectual property matters up to 10% as needed.
Facilitate the drafting of new patent applications and respond to office actions.
Assist in licensing negotiations as they arise.
Identify legal issues as they arise and escalate as needed.
Other duties pertinent to IP matters as assigned.
Juris Doctor Degree.
Registered US Patent Attorney/Agent in good standing with the U.S. Patent and Trademark Office.
5+ years of experience in patent prosecution.
Degree in biotechnology, technology, or a similar field.
5+ years of experience independently preparing and prosecuting patent applications.
Knowledge of domestic and international laws, regulations, and processes for patents and trade-secrets.
handling post grant proceedings and oppositions.
prosecuting active and complex patent portfolios in biotechnology and/or technology spaces.
identifying severity and areas for issues and escalating at applicable times.
History of collaborative, solution-oriented teamwork.
Strong oral and written communication skills with demonstrated ability to to simplify complex legal and scientific concepts for audiences with varying levels of fluency in those areas.
Exceptional skills in the areas of organization, planning, and attention to details.
Agreement to maintain confidentiality as it pertains to proprietary and/or sensitive information.
Understanding of HIPAA and importance of patient data privacy.
Commitment to reflect FMIs values: passion, patients, innovation, and collaboration.