Corporate Counsel IP

Organization
Genomic Health
Job Location
Redwood City, CA 94063
Job Description

Intellectual property (IP) counsel to focus on global transactions and IP portfolio development for complex and innovative technology in the field of oncology molecular diagnostics and precision medicine. Position will be responsible for managing Patent Counsel, Trademark Counsel and leading overall IP strategy and patent portfolio management for company.

Requirements
  • Work with Business Development on technology collaborations, mergers & acquisitions, licensing, and freedom to operate analyses.
  • Support Contracts team in reviewing IP provisions in applicable GHI contracts.
  • Work with Patent Counsel to manage GHI's patent portfolio, including patent application drafting and prosecution, supervising outside IP counsel, conducting literature and patent searches, provide client education, and review third party applications, patents, and file histories
  • Communicate regularly with scientists, researchers and other applicable company stakeholders regarding on-going scientific work, inventions, and invention records
  • Participate in and oversee patent application drafting teams/schedules and ensure deadlines are met
  • Keep research investigators informed of key milestones in patent drafting and prosecution
  • Advise contracts on IP provisions of clinical study, R&D, and other technology agreements
  • Perform and analyze searches relating to topics of interest or third party patent positions
  • Initiate patent due diligence reviews as requested by Patent Counsel or Business Development
  • Correspond with patent licensees/licensors, as necessary
  • Manage company's global trademark portfolio including providing direction to company stakeholders on appropriate usage, assessing potential trademark infringement actions and directing Trademark counsel in filing and maintenance of new trademarks
  • Knowledge of copyright law
  • Assist with document collection and production, and other litigation/inter parties matters as needed
  • Manage Intellectual Property legal assistant in all matters of responsibility
  • Must have at least 5 years of experience in (1) sophisticated licensing in biotechnology, medical device, or diagnostics, including development, IP acquisition, due diligence, and other technology related transactions; and (2) drafting and prosecuting U.S. patent applications in chemical & or biotechnology art units, including proficiency in performing computer-based structure, patent, and literature searches
  • Must have at least two years prior law firm experience
  • Must be admitted to practice in California
  • B.S. or higher degree in a chemical or biological science, a J.D. from an accredited law school, and registered to practice before the U.S. Patent and Trademark Office for at least 3 years
  • Ability to handle multiple tasks in a fast-paced environment is essential
  • Experience managing team and working in highly collaborative and cross-functional environment
  • Conversant in IP jurisprudence in United States and abroad regarding molecular diagnostics, biomarkers and next generation sequencing
  • Able to integrate and apply feedback in a professional manner

 

How to Apply

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