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Werfenlife SA.

Intellectual Property Counsel

Werfenlife SA., Bedford, Texas, United States, 76022


Bedford - 180 Hartwell Road Bedford, Massachusetts 01730 United States Country:

United States Shift:

1st About the Position

Introduction

Werfen

is a growing, family-owned, innovative company founded in 1966 in Barcelona, Spain. We are a worldwide leader in specialized diagnostics in the areas of Hemostasis, Acute Care Diagnostics, Transfusion, Autoimmunity, and Transplant. Through our Original Equipment Manufacturing (OEM) business line, we research, develop, and manufacture customized assays and biomaterials. Our Headquarters and Technology Centers are located in the US and Europe, and our workforce is more than 7,000 strong. Our success comes from a specific focus in these rapidly evolving diagnostic areas, our commitment to customers, and our dedication to innovation and quality. We’re passionate about providing healthcare professionals the most valuable and complete solutions to improve hospital efficiency and enhance patient care. Overview

Job Summary The Intellectual Property (IP) Counsel is responsible for providing high-quality IP service to the entire Werfen organization. The position reports directly to the Chief IP Counsel. The IP Counsel is responsible for strategically establishing patent portfolios in different business areas, performing freedom-to-operate analyses, assisting with IP due diligence, supporting internal clients, managing outside counsel, and working closely with both the business and the Chief IP Counsel on a daily basis. Responsibilities

Key Accountabilities Initiate, improve, and implement IP strategies and processes across Werfen technology centers to optimize IP asset procurement. Identify strengths and weaknesses and set priority to selected technical areas for IP procurement. Update databases and provide IP statistics information to the business. Continue to learn the ever-changing IP laws and practices in major jurisdictions and apply such knowledge effectively in daily work. Perform freedom-to-operate studies and provide high-quality work products to the business. Effectively, efficiently, and independently manage outside counsel to ensure high-quality prosecution work product within a reasonable budget. Perform trade secret surveys and strategize and implement trade secret policies adapted to local laws within Werfen entities. Assist with trademark portfolio management. Assist with IP-related agreements. Support software licensing matters and other day-to-day IP-related matters, including responding to client inquiries or performing other assigned tasks as they arise. Perform other duties and responsibilities as assigned. Networking/Key Relationships Establish and maintain good working relationships with marketing, R&D, and other stakeholders within the business. Qualifications

Minimum Knowledge & Experience required for the position: Bachelor's degree in science or engineering, preferably in biological sciences, required. JD from an accredited U.S. law school and membership in good standing of state bar required. Admission to practice before the U.S. Patent & Trademark Office required. Minimum of 5 years of relevant experience gained in a law firm required. In-house experience is a plus but not required. Solidly trained in patent drafting and prosecution, and currently able to independently draft and prosecute without senior attorney’s supervision. Well-versed in patent law in major jurisdictions in software, hardware, and diagnostic assays. Substantial freedom-to-operate (FTO) experiences, including searches, evaluations, and work product generation. Preferred training or experience relevant to life sciences, chemical analysis, or materials characterization, and strong technological aptitude and inclination to learn and work with a range of technologies. Management has the discretion of substituting relevant work experience for a degree and/or making exceptions to the years of experience requirement. Skills & Capabilities: Proven ability to establish a high degree of credibility, respect, and trust at all levels including with technologists, scientists, managers, and executives. Strong professional and personal communication skills, capable of dealing with a wide range of people. Accountable for the responsibilities taken or work assigned. Effective planning and organizing skills to prioritize key areas of responsibility, tasks, and projects. Strong team player who is both committed and flexible. Combination of in-depth legal knowledge and commercial awareness of the business issues facing the organization and the ability to deal with problems in a practical manner. The successful candidate must exhibit the highest integrity, excellent judgment, and the ability to proactively recognize and effectively communicate legal issues to patent, legal, and senior management. Be energized by challenging and interesting legal work, technical and scientific matters, and novel business problems. Be keenly interested in and curious about technology and eager to work closely with technology development professionals. Be able to work cross-functionally to develop knowledge to enhance support of business needs. Have excellent drafting and very clear communication skills. Must be able to multitask and prioritize in a dynamic work environment. Must be able to independently lead projects and complete tasks timely with high-quality work products and with minimum supervision. Must be professional, thoughtful, respectful, flexible, responsive, and accountable. Must be willing to work on not only high-risk matters but also daily matters including looking up patent status or generating statistics or responding to client inquiries on various matters. Must be willing to adapt to the Werfen business environment, learn about business perspectives, and practice within. Must be able to think strategically but also work on details meticulously. Must be able to initiate projects as needed and follow through implementation. Must be able to handle matters in a wide range of technology fields, curious, and willing to take on new tasks and continuously learn. Must stay up to date with evolving IP laws in major jurisdictions. Up to 5% travel required, mainly in the US to other technology centers. If you are interested in constantly learning and being challenged on a daily basis, we encourage you to submit your resume or CV. Werfen is an Equal Opportunity employer and is committed to a diverse workplace. Werfen strictly prohibits unlawful discrimination, harassment, or retaliation based upon an individual’s race, color, religion, gender, sexual orientation, gender identity/expression, national origin/ancestry, age, mental/physical disability, medical condition, marital status, veteran status, or any other protected characteristic as defined by applicable state or federal law.

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