In-House IP Counsel – Corporation – Boston, Ma or Remote

Elucid, a small corporation, is seeking an In-House IP Counsel to work in Boston, Ma or remotely.

We're looking for an in-house intellectual property attorney who will play a critical role in ensuring that Elucid’s IP is successfully protected. Our ideal candidate will have a minimum of 8 years of IP experience and have a strong technological background including an advanced technical degree. Technical familiarity with and understanding of SaMD and AI is a plus. In this role, you will work with the Elucid team and outside counsel to support high volume US and foreign patent generation across the organization.

Primary Responsibilities:

  • Lead the development and management of Elucid’s IP portfolio, collaborating closely with internal technical stakeholders on patent applications
  • Draft, file, and prosecute patent applications and manage outside counsel as appropriate
  • Lead collaboration with and management of outside counsel in relation to IP matters, as appropriate
  • Be a trusted advisor to internal stakeholders to provide practical and strategic advice in navigating the complex and evolving IP landscape in the SaMD and AI arena
  • Provide actionable legal advice and strategies to internal stakeholders on a wide variety of IP matters, including patents, trade secrets, freedom-to-operate and validity
  • Collaborate cross-functionally with Elucid’s R&D team and business leadership to develop and enhance IP awareness and implement IP strategies including the promotion of internal filings of invention disclosures to ensure that company innovations are protected
  • Maintain a deep and current awareness of evolving relevant laws and regulations in the IP space for SaMD, AI, software (including open-source) and healthcare to mitigate risks associated therewith
  • Develop and maintain a deep and current awareness of the competitive IP landscape
  • Draft, revise and negotiate IP terms of various contracts, including collaboration agreements, licensing agreements, joint development agreements and non-disclosure agreements
  • Render legal opinions regarding patentability, validity, non-infringement and freedom to operate

Education and Experience:

  • JD from an ABA-accredited law school
  • Admission to a state bar in good standing
  • Admission to practice before the U.S. Patent and Trademark Office in good standing
  • Ph.D. or master’s degree in a related technical field (i.e., electrical engineering, computer science, computer engineering or associated discipline) with excellent academic credentials
  • A minimum of 8 years' IP experience in a corporation or, law firm
  • Experience in drafting and prosecuting patent applications worldwide
  • Experience developing and managing global IP portfolios, and drafting, revising and negotiating transactional agreements including licensing agreements, JDAs, and NDAs
  • Excellent written and oral communications skills
  • Strong organizational skills, keen attention to detail and the ability to manage many projects at once in a timely manner

Apply online at:
https://elucid.applytojob.com/apply/GgHWngEijB/InHouse-IP-Counsel?source=patentlyo

 

Additional Info
Employer Type: Small Corporation
Job Location: Boston, Ma or Remote