Thermo Fisher Scientific Intellectual Property Counsel in San Jose, California

Job Description

When you’re part of the team at Thermo Fisher Scientific, you’ll do important work, like helping customers in finding cures for cancer, protecting the environment or making sure our food is safe. Your work will have real-world impact, and you’ll be supported in achieving your career goals.

Thermo Fisher Scientific is seeking an experienced patent attorney to join its Intellectual Property Department. In this position you will provide leadership in patent strategy, patent preparation and prosecution, intellectual property transactions, due diligence, freedom-to-operate analysis, dispute resolution, and litigation support. More generally, you will be responsible for identifying intellectual property issues, developing effective solutions to intellectual property problems, and guiding the business.

This role will report directly to IP counsel of Chromatography and Mass Spectrometry Division

and support technology platforms and related products and services.

What will you do?

You will be an essential member of a small international group of attorneys, patent agents and support personnel responsible for intellectual property matters, primarily for the mass spectrometry business of Thermo Fisher Scientific. Principal activities and tasks include the following:

  • Securing patent protection for inventions developed at Thermo Fisher Scientific, including drafting applications and Office Action responses, developing strategies for identifying and capturing high-value IP, and overseeing the work of outside counsel;

  • Providing product clearance opinions and advising R&D staff;

  • Supporting patent assertion, defense and litigation matters;

  • Drafting, reviewing and negotiating various IP-centric agreements, including collaborative and sponsored research agreements, technology licenses and confidentiality agreements;

  • Advising and educating internal clients regarding IP-related issues, including new developments in laws and policies.

How will you get here?

Education:

  • Admission to practice before the U.S. Patent & Trademark Office.

  • JD or equivalent.

  • Membership in good standing of the California Bar (or member in good standing of another state bar and eligible for RIHC status in California).

  • Bachelor's degree relevant to Thermo Fisher Scientific offerings in Engineering, physical sciences and a strong technological aptitude for learning and working with a range of technologies. Such training and experience could include, for example, a background in chemistry, molecular biology, mass spectrometry, spectroscopy.

Experience:

  • Minimum of 4 years’ practical experience in a law firm;

  • Experience reviewing and revising patent applications; thoroughly analyzing patent infringement, validity, and related issues;

  • Experience collaborating with and managing external counsel (e.g., regarding patent prosecution, due diligence, patent analysis/opinions); and undertake and manage a variety of intellectual property matters.

  • Experience in freedom-to-operate analysis is required, and experience in due diligence and litigation analysis and support will be a plus.

At Thermo Fisher Scientific, each one of our 65,000 extraordinary minds has a unique story to tell. Join us and contribute to our singular mission—enabling our customers to make the world healthier, cleaner and safer.

Apply today! http://jobs.thermofisher.com

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.

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.