The Senior Patent Counsel will support the company on all IP matters as well as building the Intellectual Property function. The Senior Patent Counsel will closely collaborate with key stakeholders throughout the company, advising on patent prosecution, portfolio strategy and litigation. You will also help to develop, establish, and build the tools and processes to support our fast-growing business.
• Lead, manage and leverage all patent, trademark, and intellectual property (IP) activities.
• Develop, agree, and implement ONWARD’S IP strategy to protect ONWARD inventions and mitigate third-party risks.
• Be the subject matter expert, providing and maintaining a clear and effective strategy of which IP needs to be generated, procured, out licensed, or retired, and communicate clearly accordingly.
• Organize ONWARD’s patents and claims in ways that can be easily consumed and understood by the business.
• Collaborate with business partners to identify areas of strategic importance and put plans in place to bolster our IP portfolio accordingly.
• Draft, file, prosecute and manage key patent filings, renewals, fees, and annuities.
• Build, manage and optimize external relationships with outside counsel, and use diligently to obtain strategic insight and counsel on industry best practices.
• Interface with ONWARD licensing partners to forge, manage and amend license agreements as needed.
• Render legal opinions with respect to patent value, patentability, validity, freedom to operate (FTO), licensing opportunities and agreements; infringement and validity analyses; formulate patent strategies for key ONWARD stakeholders that secure IP positions and FTO, as well as enabling IP defenses.
• Efficiently negotiate IP and related clauses in BD&L, Research, IIT, Development and other key Agreements.
• Ensure that IP risks are well understood and documented, and that all strategies and actions have the appropriate level of approval and support.
• Advanced degree in electronic engineering or closely related medical technology and devices areas, electrical stimulation, pharmaceutical or biotechnology intellectual property practice.
• Admission to practice before the European Patent Office. In addition, admission to practice before the U.S. Patent and Trademark Office, is a plus.
• 5+ years of experience in medical device, pharmaceutical or biotechnology intellectual property portfolio creation, strategy, and counselling.
• Demonstrated experience and track record of success in:
- Building and leveraging global intellectual property portfolios, with experience in MedTech. Experience in electrical neurostimulation would be a plus.
- Designing and implementing global IP strategies with a US and European focus.
- Executing FTO analyses across different technologies and different jurisdictions; developing and communicating actionable risk mitigation strategies.
- Experience in: IP transactions; due diligence; adverse proceedings, including in the U.S.; negotiating agreements with IP aspects.
• Excel in working independently and proactively with minimal direction, strong organizational skills, and ability to prioritize and balance competing projects and responsibilities.
• Embrace a growth-mindset and enjoy working in a fast-paced and diverse global organization.
Individual contributor reporting to VP Legal.
Do you want to join our team as our new Senior Patent Counsel? Then we'd love to hear about you!