In House Intellectual Property and Commercial Counsel

3 weeks ago

Boston MA, United States PerkinElmer Full time

The Company

The “new” PerkinElmer business, a newly independent company as of March 13, 2023, is a global analytical services and solutions provider with offerings including the leading OneSource Field and Laboratory services business that serve the biopharma, food, environmental, safety and applied end markets to accelerate scientific outcomes. Since 1937, PerkinElmer has served as a trusted partner in laboratory analysis and management and today complements its service offerings with a broad portfolio of atomic spectroscopy, molecular spectroscopy, and chromatography instruments, consumables, and reagents. With a dedicated team of more than 6,000 team members, the Company serves customers in more than 35 countries. Additional information is available at

Purpose

Provide legal support for the various PerkinElmer businesses located in different global locations and doing business internationally in more than 150 countries. The PerkinElmer businesses today provide a broad offering of products to improve the health and safety of people and the environment, including laboratory instruments, reagents, services and software to facilitate research from drug discovery to academic research.

The ideal candidate has experience managing IP portfolios with demonstrated effective communication skills, deep technical skills, and IP strategy experience. The successful candidate will partner with inventors, technical business leadership, the General Counsel, and outside counsel to provide IP portfolio services effectively. The candidate will also spend some time partnering with the commercial and sales organizations supporting sales transactions and related business items.

Location Role is remote but may eventually become a hybrid remote role in the future either in Shelton, CT or Boston, MA area.

Responsibilities

Engage and counsel inventors from the pre-invention disclosure stage, throughout the patenting process, and post-grant.

Manage outside IP counsel handling patent prosecution to ensure the strategy aligns with the business interests and goals of the company.

Manage outside trademark counsel handling trademark prosecution to protect the company’s many valuable brands.

Provide general IP guidance to non-IP members of legal team and clients with respect to patents, trademarks, copyright, and trade secrets.

Participate in integration of acquired targets to ensure complete integration of IP matters.

Conduct prior art searches and freedom-to-operate (“FTO”) analysis.

Provide IP support in transactional matters, including technology licenses, joint development agreements, acquisitions, and supply agreements.

Support PerkinElmer’s commercial organization in other legal matters outside of the IP space, including reviewing and negotiating contracts and providing legal advice.

Basic Qualifications

Juris Doctorate (J.D.) degree from an ABA accredited law school, admission to at least one U.S. state bar, and registered to practice before the U.S. Patent and Trademark Office.

At least five (5) years of patent prosecution experience in a law firm and/or in-house (a combination is preferable).

Electrical engineering, physics, and/or biotech technical backgrounds are preferred; advanced degrees preferable but not required.

Experience managing a worldwide patent portfolio and implementing a business-driven IP strategy.

In-depth understanding of US patent law, filing and prosecution strategies; familiarity with global patent laws, including Europe and WIPO.

Strong analytical skills and professional judgment; experience balancing business needs, costs, and risks; ability to work autonomously to developing practical solutions.

Excellent oral and written communication skills; ability to build relationships with internal stakeholders and external parties to achieve business goals.

EEO and Pay Transparency

PerkinElmer is committed to creating a diverse environment and is proud to be an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, gender, gender identity or expression, sexual orientation, national origin, genetics, disability status, age, or veteran status or any other characteristics protected by applicable law. PerkinElmer is committed to a culturally diverse workforce.

The annualcompensation range for this full-time position is $173,000 to $230,000. The final base pay offered to the successful candidate will be determined by factors including internal equity, work location, as well as individual qualifications, such as job-related skills, experience, and relevant education or training.

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