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Thermo Fisher Scientific Associate IP Counsel in Carlsbad, California

How will you make an impact?

As part of the Thermo Fisher Scientific team, you’ll discover meaningful work that makes a positive impact on a global scale. Join our colleagues in bringing our Mission to life every single day to enable our customers to make the world healthier, cleaner and safer. We provide our global teams with the resources needed to achieve individual career goals while helping to take science a step beyond by developing solutions for some of the world’s toughest challenges, like protecting the environment, making sure our food is safe or helping find cures for cancer.

What will you do?

Thermo Fisher’s dynamic and fast-growing Clinical Next Generation Sequencing Division (CSD) is seeking a motivated Patent Attorney to support innovation capture, IP risk mitigation, IP dispute resolution and IP transactional efforts for their growing research and clinical diagnostics assays and analyses business, including our oncology-based companion diagnostics partnering products and business. CSD supports a diverse range of products across the next generation sequencing workflow, including our FDA-approved Oncomine Dx Target Test as well as a range of research and clinical research products for oncology and immuno-oncology, infectious disease and reproductive health. This role will also support our leading sequencing library preparation technologies like AmpliseqTM and AmpliseqTM HD and our molecular biology products for our targeted sequencing platforms to drive CSD’s vision to offer rapid and affordable genetic testing and research across the world.

This role requires a strategic mindset, a strong technical background, and proven skills in drafting and prosecuting global patent protection for molecular biology and reagent-based inventions. You will be joining a high-performing IP team that prides itself on delivering strong, defensible patents and thoughtful, business-oriented counseling solutions.

Key Responsibilities:

  • Working directly with R&D teams educating them on patentable inventions. Interacting with and providing legal and strategic guidance to senior division level business management, senior scientists, and other functional organizational leadership.

  • Developing a principled and strategic framework for capturing innovation and protecting complex molecular biology assays, methods and reagents innovation for the division worldwide.

  • Providing IP legal support to our companion diagnostics business development team to support our existing and developing companion diagnostics partnering programs

  • Developing and implementing a framework for evaluating prosecution ROI

  • Managing outside counsel in their efforts for the company

  • Support the company IP team in IP Group-wide initiatives and in developing a more flexible company-wide IP support model.

  • Conduct proactive in-depth analysis of competitor and industry IP portfolios; manage and improve processes for tracking innovations and competitor IP activity.

  • Navigate freedom-to-operate issues.

  • Conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, and the overall development of intellectual property assets;

  • Resolve and/or support resolution of business unit-level and division-level legal disputes and transactional negotiations

  • When necessary, provide support to our internal litigation team on any IP litigations relating to CSD’s molecular biology and reagent-related product portfolio

How will you get here?

Required Experience and Skills:

  • BS/MS/Ph.D. in Molecular Biology, Biology, Immunology or a related field consistent with the key responsibilities

  • JD required

  • Admission to a state bar and registration to practice before the U.S. Patent and Trademark Office

  • 3-8 years of experience preparing and successfully prosecuting U.S. and International patent applications related to molecular biology and reagents or related experience and/or navigating complex patent-related transactional, risk mitigation and dispute resolution projects.

  • Experience evaluating pre-launch products for innovation capture and for freedom to operate

Preferred Experience:

  • Background working with assays and reagents used for genetic analysis, including next generation sequencing

  • Background or experience with supporting IP disputes is a plus.

  • Experience at premier patent law firm

  • Experience with European or other international patent protection regimes

  • Familiarity with FDA regulations and related approval processes for diagnostic assays.

In addition, the successful candidate will have the following characteristics.

  • Business Perspective - Ability to learn and understand significant business drivers. Demonstrated abilities to manage outside counsel, work efficiently, control costs, and exercise sound business and legal judgment.

  • Self-motivated / driven to succeed - High level of initiative and ability to work autonomously. Must strive to consistently exceed expectations and look for opportunities to improve on existing processes or methods.

  • Team oriented / strong interpersonal skills - Must be comfortable working in dynamic and diverse multi-national teams and effectively collaborating with team members synergistically

  • Effective communicator - Ability to communicate efficiently across teams, functions and global regions. Skilled trainer with the ability to clearly convey concepts in a retainable and engaging manner.

  • Principled - Possesses a strong sense of ethics and integrity.

Thermo Fisher Scientific is an EEO/Affirmative Action Employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, disability or any other legally protected status.

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