Menu

Intellectual Property Counsel

at The Jackson Laboratory in Bar Harbor, Maine, United States

Job Description

The Intellectual Property Counsel is tasked with safeguarding the intangible assets of JAX. The primary responsibilities include advising on the protection of our intellectual property rights, which may include patents, trademarks, copyrights, and trade secrets. Working to understand JAX unique needs and develop strategies to secure and enforce our intellectual property rights. This often involves conducting thorough research to assess the viability and strength of intellectual property claims, drafting legal documents such as patent applications and licensing agreements, and representing clients in disputes or litigation related to intellectual property infringement. Additionally, this role must stay abreast of changes in intellectual property law and regulations, providing proactive guidance to clients to ensure ongoing compliance and protection of our intellectual assets. Overall, the role as an Intellectual Property Attorney is crucial in helping clients navigate the complex landscape of intellectual property law and maximize the value of their innovations and creations.

The ability to travel onsite to Farmington, CT or Bar Harbor, ME one week per moth is required.

Key Responsibilities and Essential Functions

Partner closely with various research teams to identify potentially patentable subject matter as well as collaborate with other internal stakeholders (e.g., research, development, business development) on matters relating to the company's global IP portfolio (e.g., due diligence in support of business development activities).

Actively manage the drafting, filing and prosecution of patent applications worldwide, both directly and through management of outside counsel.

Conduct freedom-to-operate analyses, both directly and through management of outside counsel.

Communicate with executive leadership team on IP strategy and status of matters impacting the Company's IP portfolio.

Establish a strong relationship with outside counsel and be willing to evaluate their advice independently.

Assist in the review of invention disclosures and with patent landscape searches.

Partner effectively with relevant stakeholders at all levels of the global organization and across all phases of research, development & commercialization to provide clear, strategic IP counseling.

Occasionally provide educational presentations and other training on IP matters to Laboratory employees.

Review incoming IP-related correspondence and track deadlines.

Report inventions and patents that have resulted from federally funded research grants/contracts to the funding agency via iEdison.

Provide Sponsored Research Administration with patent filing data for annual progress reports, renewal applications, award closeouts, and final invention statements reported in iEdison under the Bayh-Dole Act.

Extract relevant IP information from the USPTO databases and correspondence from outside counsel.

Assist with financial operational tasks for royalty costs and to update quarterly.

Assist with trademark portfolio management.

Reports to the Chief IP Counsel.

Knowledge, Skills, and Abilities

A U.S. patent attorney with a JD. Prior research science experience or an MS or PhD in life sciences is preferred but not required.

Registered to practice before the USPTO.

At least 6 years of experience as a patent attorney in-house or at an IP law firm supporting global IP matters related to prosecution (filing and securing patents) in a field(s) related to life science and/or data science.

Demonstrated ability in setting IP portfolio strategy and implementing through effective patent drafting and prosecution (both directly and supervising outside firms) across various technology platforms and modalities.

Collaborative and consultative contributor who possesses an ability to work well both independently and in a team environment.

Pragmatic business acumen with the demonstrated ability to recognize the business consequences of legal advice.

Strong organizational, writing, and project management skills with high level of attention to detail and accuracy.

Must have strong client service orientation.

Self-directed and proactive, comfortable executing on multiple projects independently and in collaboration with others.

Flexible and agile in supporting business goals, while balancing short-term and long-term objectives.

Demonstrated high integrity and ethics in all dealings, while understanding internal and external dynamics.

Contract review and negotiation experience.

Occasional domestic travel may be required.

Familiarity with reporting requirements in compliance with Bayh-Dole Act for inventions made with federal funds preferred.

Approaches IP with a... For full info follow application link.

All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability or protected veteran status.

Copy Link

Job Posting: 1046882

Posted On: Feb 23, 2024

Updated On: Mar 27, 2024

Please Wait ...