Remote IP Counsel - Bio Genetics Patent Drafting and Prosecution

Thermo Fisher
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Job Details

  • Location: Denver, CO, 80285
  • Date Posted: 2 months ago
  • Employment Type: Full Time
  • Category: Legal
  • Req Number: 204168BR-2
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Thermo Fisher Scientific Inc. is the world leader in serving science, with annual revenue exceeding $40 billion. Whether our customers are accelerating life sciences research, solving complex analytical challenges, improving patient diagnostics and therapies or increasing efficiency in their laboratories, we are here to support them.

How will you make an impact?

Our multifaceted and fast-growing Genetic Sciences Division (GSD) is seeking a motivated Patent Attorney to support innovation capture and IP risk mitigation for our growing medical and analytical device business, including our COVID testing business as well as other genetic analysis tools with growing relevance beyond the laboratory. GSD supports a diverse range of products including qPCR (TaqMan), microarrays (Affymetrix) and genetic sequencing, which drive its vision to offer rapid and affordable genetic testing across the world.

We are looking for individuals who possess a strategic mentality, a strong technical background, and established skills in drafting and prosecuting Instrumentation and Software inventions. You will join a hard-working IP team that prides itself on delivering strong, defensible patents and counseling solutions.

What will you do?

  • Work directly with R&D teams and educate them on patentable inventions. Connect with and provide legal and strategic counsel to senior management, engineers and other functional organizational leadership.
  • Develop a strategic framework for capturing and protecting sophisticated innovation.
  • Develop and implement a framework for evaluating prosecution return on investment
  • Develop a team of internal patent agents as well as outside counsel in their efforts for the company
  • Support the company IP team in IP Group-wide initiatives and in developing a more flexible company-wide IP support model.
  • Conduct proactive analysis of competitor and industry IP portfolios; lead and improve processes for tracking innovations and competitor IP activity.
  • Navigate freedom-to-operate issues.
  • Conduct employee training sessions on the protection of innovations through the patent process, standard methodologies for maintaining confidential business information, and the overall development of intellectual property assets;
  • Resolve and/or support resolution of business unit level disputes
  • Provide support to our litigation team on any IP litigations relating to GSD’s device-related product portfolio

How will you get here?

  • Bachelors degree and J.D. required from an accredited university; Master's degree/PhD in biological sciences preferred (preferably including genetics or molecular biology; or a related field with experience in the life sciences.)
  • Minimum of 2 - 3 years demonstrated ability preparing, drafting, and successfully prosecuting U.S. and International patent applications related to genetics or bio instrumentation and software inventions. 4 or more years proven track record is a plus.
  • Admission to a state bar and registration to practice before the U.S. Patent and Trademark Office.

Preferred Experience:

  • Background working in genetic analysis (e.g., PCR)
  • Experience at an outstanding patent law firm or AmLaw 200 firm.
  • Experience with European or other international patent protection regimes
  • Familiarity with FDA medical device regulations and related approval processes.

Knowledge, Skills, Abilities:

  • Business Perspective - Ability to learn and understand significant business drivers.
  • Demonstrated success leading outside counsel, working efficiently, controlling costs, and exercising sound business and legal judgment.
  • Self-motivated / driven to succeed - High level of initiative and ability to work autonomously. Must strive to consistently excel 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 - Ability to communicate efficiently across teams, functions and global regions. Skilled trainer with the ability to clearly convey concepts in a retainable and engaging manner.
  • Principled - Possesses a strong sense of ethics and integrity.

Our Mission is to enable our customers to make the world healthier, cleaner and safer. Watch as our colleagues explain 5 reasons to work with us. As one team of 100,000+ colleagues, we share a common set of values - Integrity, Intensity, Innovation and Involvement - working together to accelerate research, solve complex scientific challenges, drive technological innovation and support patients in need. #StartYourStory at Thermo Fisher Scientific, where diverse experiences, backgrounds and perspectives are valued.

Thermo Fisher Scientific is an EEO/Affirmative Action Employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, disability or any other legally protected status.

Thermo Fisher Scientific offers accessibility service for job seekers requiring accommodations in the job application process.