Description:

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Summary:
Company Overview: For 75 years A Medical Equipment Manufacturing Company has created innovative, high-quality components for x-ray imaging systems, collaborating with our customers to create products that positively impact the lives of millions of people every day. As pioneers in our field, we understand the critical role intellectual property (IP) plays in safeguarding our innovations and maintaining our competitive edge. We are seeking an experienced and talented Intellectual Property Counsel to join our legal team and drive our IP strategy while ensuring the protection and enforcement of our valuable intellectual property rights.

As Senior IP Counsel and Manager, Intellectual Property Strategy & Implementation, you will play a pivotal role in shaping our company's IP strategy and managing all aspects of intellectual property rights. Working closely with our legal team, R&D, and business units, you will provide expert advice on intellectual property matters, assess potential risks and opportunities, and establish proactive strategies, policies, and procedures to safeguard our IP assets. This role requires a deep understanding of intellectual property law and a proven track record in developing and implementing effective IP strategies.

Job Description:
Performs all required management responsibilities including but not limited to: implementing the company's policies, programs, and guidelines; ensuring employee productivity and growth; managing resources; knowing A Medical Equipment Manufacturing Company's business; and maintaining functional, technical, and external market awareness necessary for managing immediate organization.

Responsibilities:
  • Intellectual Property Strategy Development: Collaborate with cross-functional teams to develop and execute a comprehensive IP strategy aligned with the company's business objectives. This includes identifying and prioritizing key innovations, creating patent portfolios, and assessing licensing opportunities.
  • Intellectual Property Management: Oversee the management and prosecution of patents, trademarks, and copyrights, ensuring timely and accurate filings, responses, and maintenance actions. Work closely with R&D teams to identify patentable inventions and guide them through the disclosure process. Offer strategic guidance on patent filing decisions. Regularly review the company's existing IP portfolio to ensure alignment with business goals, identifying opportunities for expansion, and advising on portfolio management and pruning. Conduct patent landscape analyses and monitor competitor activities to identify potential infringement risks and opportunities. Develop and maintain a program to adequately protect and enforce the company's trade secrets.
  • Agreement Negotiation: Ensure the organization's intellectual property assets are protected and do not infringe on the intellectual property rights of others, including structuring and negotiating development agreements, licenses and other intellectual property agreements.
  • Intellectual Property Enforcement/Defense/Litigation: Collaborate with external counsel and other stakeholders to enforce and defend the company's intellectual property rights, including litigation, other disputes, infringement actions, cease and desist letters, and opposition proceedings.
  • IP Training and Awareness: Develop and deliver IP training programs to educate employees about intellectual property matters, promoting a culture of IP awareness and compliance throughout the organization.
  • Intellectual Property Due Diligence/Acquisitions: Conduct thorough IP due diligence for potential partnerships, acquisitions, and collaborations, providing insights and recommendations to the executive team. Oversee and manage other intellectual property issues arising in the context of mergers and acquisitions, including integration of IP portfolios.
  • IP Policy and Compliance: Establish and update internal IP policies and procedures to ensure adherence to best practices and relevant laws and regulations necessary or advisable to protect and defend the company's IP.

Qualifications:
  • Juris Doctor (JD) from a nationally accredited law school and active membership in good standing with a state bar association, preferably Utah.
  • 7+ years of intellectual property law experience including law firm and/or corporate law department experience.
  • Solid foundation in all aspects of IP law
  • Demonstrated track record of leading teams of diverse IP practitioners and providing leadership at all levels on strategically important IP issues.
  • Strong instincts and exceptional analytical and problem-solving skills, with the ability to navigate complex legal issues and business considerations.
  • Excellent business judgment with the ability to make decisions and give advice that demonstrates an understanding of overall business objectives and the risk/reward of each situation.
  • Results-driven, consistently achieving goals/meeting deadlines, and pursuing goals with a sense of urgency/energy and an emphasis on excellence.
  • Effective communicator and leader, with ability to effectively interface with internal teams and external stakeholders.
  • Ability to build relationships that foster a cohesive, committed team environment and to effectively collaborate with cross-functional teams.
  • Proactive self-starter with demonstrated ability to work independently, manage multiple priorities, and deliver results in a fast-paced environment.