Intellectual Property Counsel

Hologic is seeking Intellectual Property (IP) Counsel to support its fast-paced Diagnostic Solutions Division. IP Counsel will be responsible for advising internal business and legal partners, as well as managing outside counsel on a wide range of intellectual property issues involving patents, trademarks, trade secrets, and copyrights. This position is a fully onsite role based in San Diego, California and will report to Senior Intellectual Property Counsel for the Diagnostic Solutions Division.

Key Responsibilities:

• Develop and manage a strategic global intellectual portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic’s business objectives
• Draft and prosecute patent applications in the biological and chemical arts
• Conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases
• Assist with M&A due diligence, including contract reviews, portfolio assessments, and freedom-to-operate analyses
• Manage IP litigation and administrative proceedings
• 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
• Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations
• Review marketing and promotional literature
• Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive intelligence, commercial activities, and licensing opportunities
• May participate in conducting periodic training for employees on invention disclosures, litigation preparation, confidentiality, the safeguarding of trade secrets, and other intellectual property topics

Qualifications:

• Demonstrated experience in developing and maintaining a patent portfolio
• Experience in conducting and reviewing patentability and freedom-to-operate searches
• At least minimal experience negotiating and drafting agreements having an IP component
• Experience managing a trademark portfolio is desired
• Possession of excellent interpersonal, communication, and collaborative skills with the ability to impact and influence others at all levels
• Possession of organizational skills and the ability to manage numerous projects and conflicting demands
• Business acumen and ability to distill complex legal and technical concepts into practical legal advice

Education and Experience:

• JD from an accredited law school 
• Member in good standing of a state bar and registered to practice before the USPTO
• A Bachelor of Science in Biology, Chemistry, or Biomedical Engineering
  • An advanced degree in a biological science, or
  • At least 2 years of practical laboratory experience
• 3-7 years of experience as a registered patent attorney

The annualized base salary range for this role is $183,000 to $325,000 and is bonus eligible. Final compensation packages will ultimately depend on factors including relevant experience, skillset, knowledge, geography, education, business needs and market demand.

Agency and Third-Party Recruiter Notice:

Agencies that submit a resume to Hologic must have a current executed Hologic Agency Agreement executed by a member of the Human Resource Department. In addition, Agencies may only submit candidates to positions for which they have been invited to do so by a Hologic Recruiter.  All resumes must be sent to the Hologic Recruiter under these terms, or they will not be considered.

Hologic, Inc. is proud to be an Equal Opportunity Employer inclusive of disability and veterans.

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