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 a patent attorney with mid-level experience to join its Intellectual Property Department. In this position you will have responsibility for, patent preparation and prosecution, licensing and other transactions, , freedom-to-operate analysis, and patent portfolio development. More generally, you will help identify intellectual property issues, develope effective solutions to intellectual property problems, and assist to guide the business.

This role will report directly to divisional lead IP Counsel

and support analytical instrumentation 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 and chromatography businesses 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 regarding design-around activities;

  • ;

  • 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.

  • Supporting patent assertion, defense and litigation matters

How will you get here?

Education:

  • 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).

  • Admission to practice before the USPTO.

  • At least a bachelor's degree in engineering or in the physical sciences, with a graduate degree and/or substantial industrial experience preferred. Ideally, your experience and technical training will be in a field that has given you familiarity and knowledge of analytical instrumentation, such as mass spectrometry, optical spectroscopy, or x-ray diffraction/fluorescence.

  • Experience and qualifications:

  • Minimum of 3 years’ experience practicing as a patent attorney in a law firm or in-house legal department;

  • Substantial recent hands-on experience drafting and prosecuting U.S. patent applications, with a background in prosecution of applications in Europe and Asia a strong plus

  • Demonstrated ability to conduct freedom-to-operate analyses for new products, including preparation of opinions of counsel relating to non-infringement and invalidity

  • Enthusiasm for learning new technologies, with a proven ability to gain competence quickly and independently

  • Significant experience drafting and negotiating agreements with IP content

  • Ability to work directly with research and engineering personnel to capture inventions and resolve IP questions

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.

If you are an individual with a disability who requires reasonable accommodation to complete any part of our application process, click here at https://jobs.thermofisher.com/page/show/eeo-affirmative-action-statement#accessibility for further assistance.

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.