Position Overview

Manage the Intellectual Property (“IP”) function. Assume primary responsibility for the strategic management of intellectual property matters for the company, including management of the global IP portfolio, overseeing freedom to operate analyses, advising client groups on IP matters, and evaluating external IP opportunities. Additional responsibilities include leadership in due diligence for major acquisitions and management of global IP litigation matters. Job duties:
  • Devise and implement IP strategies across the organization in collaboration with senior leadership.
  • Provide comprehensive strategic IP counseling to functional departments, including counseling internal clients regarding patent strategy and trademark clearance and usage.
  • Oversee the management of the IP portfolio, including prosecution of foreign and domestic patent and trademark applications, and monitor competitive IP.
  • Oversee patentability, freedom-to-operate, and IP due diligence analyses.
  • Draft, negotiate, and advise on IP-related agreements, letters, forms, and other legal documents, and provide creative and practical legal solutions to meet commercial needs.
  • Assist with business development transactions, including IP due diligence, IP asset valuation, and transaction structure.
  • Manage the IP function including the development and implementation of policies and procedures.
  • Assess third party IP disputes and manage IP litigations matters.
  • Perform other duties and responsibilities as assigned.

    1. J.D. from an accredited law school.
    2. Bachelor’s degree in Engineering, Chemistry, Physics, or similar field.
    3. Minimum of twelve (12) years of IP experience in a relevant law firm or corporate setting.
    4. Minimum five (5) years of management responsibility.
    5. Member of California State Bar and member of Federal Patent Bar.
    Desired Qualifications
    1. Possess an understanding of the interrelationship between the legal, technical, and business aspects of IP.
    2. A self-starter who can lead teams, manage other attorneys, and act effectively as a counselor to internal clients.
    3. Exceptional interpersonal skills.
    4. Capable of exercising excellent business judgement.
    5. Exhibit substantial strategic decision-making ability with a focus on helping the company achieve its business objectives while managing the legal risks involved.
    6. Excellent organizational skills and project coordination ability with acute attention to detail is essential.
    7. Ability to work independently and manage multiple priorities effectively.
    8. Medical device, pharmaceutical or other healthcare-related experience highly desirable.
    9. Proficient with MS Word, Excel, and Outlook.