Role details
Hologic is seeking Intellectual Property (IP) Counsel to support its fast-paced Diagnostic Solutions Division. IP Counsel will be responsible for advising internal business and legal partners, as well as managing outside counsel on a wide range of intellectual property issues involving patents, trademarks, trade secrets, and copyrights. This position is a fully onsite role based in San Diego, California and will report to Senior Intellectual Property Counsel for the Diagnostic Solutions Division. Key Responsibilities:
- Develop and manage a strategic global intellectual portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic’s business objectives
- Draft and prosecute patent applications in the biological and chemical arts
- Conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases
- Assist with M&A due diligence, including contract reviews, portfolio assessments, and freedom-to-operate analyses
- Manage IP litigation and administrative proceedings
- Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements
- Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations
- Review marketing and promotional literature
- Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive intelligence, commercial activities, and licensing opportunities
- May participate in conducting periodic training for employees on invention disclosures, litigation preparation, confidentiality, the safeguarding of trade secrets, and other intellectual property topics Qualifications:
- Demonstrated experience in developing and maintaining a patent portfolio
- Experience conducting and reviewing patentability and freedom-to-operate searches
- At least minimal experience negotiating and drafting agreements having an IP component
- Experience managing a trademark portfolio is desired
- Excellent interpersonal, communication, and collaborative skills with the ability to impact and influence others at all levels
- Organizational skills to manage numerous projects and conflicting demands
- Business acumen and ability to distill complex legal and technical concepts into practical legal advice Education and Experience:
- JD from an accredited law school
- Member in good standing of a state bar and registered to practice before the USPTO
- Bachelor of Science in Biology, Chemistry, or Biomedical Engineering
- Advanced degree in a biological science, or at least 2 years of practical laboratory experience - 3–7 years of experience as a registered patent attorney Additional Info:
- The annualized base salary range for this role is $183,000 to $325,000 and is bonus eligible. Final compensation depends on experience, skills, knowledge, geography, education, business needs, and market demand.