Intellectual Property Counsel – Large Corporation – San Diego, California

Hologic, Inc, a large corporation, is seeking an Intellectual Property Counsel to work in San Diego, California

Roles and Responsibilities:

Develop and manage a strategic, global intellectual property portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic’s business objectives

Conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases

Conduct trademark clearance searches and regularly perform trademark and copyright compliance review for publications, marketing materials, and product releases

Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations

Draft and prosecute patent applications in the biological, chemical and mechanical arts

Supervise outside counsel engaged in procuring, defending, and asserting IP rights, including IP-related litigation and post-grant challenges, including inter partes review, post grant review, oppositions and invalidation appeals

Acquire detailed understanding of the technologies, products and R&D activities of the business

Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive intelligence, commercial activities, and licensing opportunities

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

Conduct periodic training for employees on invention disclosures, intellectual property topics, litigation preparation, confidentiality, and the safeguarding of trade secrets

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Additional Info
Employer Type: Large Corporation
Job Location: San Diego, California