Director IP Counsel

1 month ago

Hillsboro, United States Thermo Fisher Scientific Full time

Work Schedule

Standard (Mon-Fri)

Environmental Conditions

Office

Job Description

Thermo Fisher Scientific Inc. is a Fortune 100 company and a world leader in serving science, with annual revenue exceeding $40 billion. Our mission is to enable our customers to make the world healthier, cleaner, and safer. Whether our customers are accelerating life sciences research, solving sophisticated analytical challenges, improving patient diagnostics and therapies, or growing efficiency in their laboratories, we are here to support them.

Location: Hillsboro, OR; Pittsburgh, PA; or Morrisville/RTP, NC onsite where Thermo Fisher is building multi-disciplinary legal teams to support multiple businesses.

How you will make an impact:

Thermo Fisher's Analytical Instruments Group (AIG) provides complex technologies to analyze virtually any sample type including proteins and their structure, inorganic materials at atomic resolution, and chemicals and their composition. Our mass spectrometry, electron microscopy and spectroscopic technologies have been crucial in advancing industrial processes such as semiconductor manufacturing and have helped answer foundational questions in the life sciences.

This position will primarily support AIG's Chromatography and Mass Spectrometry division. The successful candidate will work on a diverse set of legal matters such as business-strategic protection of IP, freedom-to-operate, licensing, IP-related contracts, oppositions, and dispute resolution.

This role requires a strategic approach, critical thinking, a strong technical background, perceptive skills in drafting / prosecuting patents and experience applying IP in a business context. You will be part of an impactful IP team that prides itself on delivering strong, defensible patents and thoughtful counseling solutions. You should be comfortable in an evolving and fast paced environment, love solving problems, thrive in a technically diverse environment, and above all be passionate about diversity of thought.


What will you do:

  • Develop strategic priorities, translate them in concrete projects & work closely with teams across the divisions to deliver on execution at its highest potential.
  • Drive development of a patent portfolio aligned with business objectives and priorities.
  • Prepare and prosecute high-quality patent applications that provide an advantage in the marketplace.
  • Conduct in-depth analysis of competitor and industry IP portfolios; manage and improve processes for tracking innovations and competitor IP activity.
  • Review IP aspects of commercial agreements and counsel on desired changes to benefit the goals of the business.
  • Navigate freedom-to-operate issues.
  • Work directly with diverse R&D teams located around the globe to build an IP-savvy culture.
  • Conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, and the overall development of intellectual property assets.

How will you get here:

Education

  • Engineering or scientific degree in a field related to analytical instrumentation preferred.
  • Member in good standing of a US State bar and registration to practice before the US Patent & Trademark Office with 8+ years of experience.
  • Practical experience with, or an advanced degree in a field related to, analytical instrumentation.

Experience

  • Experience preparing and successfully prosecuting U.S. and International patent applications.
  • Familiarity in counseling business leaders on intricate IP matters.
  • Proven track record to perform sophisticated IP analyses including product clearances.
  • Excellent verbal and written communication skills.


Knowledge, Skills, Abilities:

  • Business Perspective - Ability to learn and understand significant business drivers. Demonstrated abilities to manage outside counsel, work efficiently, control costs, and exercise sound business and legal judgment.
  • Self-motivated / driven to succeed - High level of initiative and ability to work autonomously. Must strive to consistently go above and beyond and look for opportunities to improve on existing processes or methods.
  • Team oriented / strong interpersonal skills - Must be comfortable working in dynamic and diverse multi-national teams.
  • Effective communicator - Communicate efficiently across teams, functions, and global regions. Skilled trainer with the ability to clearly convey concepts in a retainable and engaging manner.
  • Possess a strong sense of ethics and integrity.

We welcome people from all backgrounds who seek the opportunity to help build a future where the world is Healthier, Cleaner and Safer. If you have the curiosity, passion, and collaborative spirit, work with us, then let's move the world forward, together.

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