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Posted April 10, 2024

Patent Counsel

IDEXX
Portland, ME Full Time
Reference: IDEXXJ-041816

The Patent Counsel or Patent Agent will be an integral member of IDEXXs growing intellectual property group and will support teams across IDEXX to build and leverage IDEXXs intellectual property interests, with a focus on diagnostic assays and diagnostic instrumentation and software. Primary Responsibilities will be the harvesting of invention disclosures in concert with the internal patent liaison staff, and the drafting, filing and prosecution of associated patent applications. Responsibilities may also include handling a full scope of intellectual property issues for the relevant technology areas, including diagnostic instrument and software patent issues, general client counseling, rendering legal opinions with respect to patentability, validity and freedom to operate (as appropriate), patent landscaping, due diligence reviews in support of M&A and other activities, litigation support as needed, and intellectual property-related transactional work. The counsel or agent will work closely with other members of the IP team, Legal Department, R&D, business development, and commercial leadership in a very innovative and growth-oriented environment and will collaborate with other in-house resources and attorneys to accomplish IDEXXs strategic objectives. The position is intended for the candidate interested in a truly empowered career focused primarily on patent preparation and prosecution, but also with the opportunity to help shape the current and future IP practice of a very successful company operating in the exciting and growing animal healthcare diagnostic space.

What you can expect in this role:

You will support R&D and the business with worldwide patent prosecution and portfolio management of various technologies, including those related to diagnostic assays, diagnostic instrumentation and software.

You will provide counsel and legal support on patentability issues and may also provide support on freedom to operate issues, including drafting opinions as necessary, as appropriate.

You may be involved in the drafting, review, and negotiation as needed of various forms of IP agreements, including licenses, development, sponsored research and material transfer agreements.

You will work closely with others in R&Ds IP liaison group, as well as in the Legal Department in the support of a variety of IP issues.

You may be involved in providing support for IP due diligence in business acquisitions or divestitures.

You will provide counsel to clients and other functional staff on general legal IP questions

You will maintain knowledge of the Animal Health diagnostic industry, and IP and related regulatory developments that affect IDEXX, and will advise internal stakeholders as appropriate.

You will work with and supervise US and international outside counsel on various IP matters as appropriate.

You will manage IP related budgets as appropriate and adhere to and model the IDEXX Purpose & Guiding Principles.

What you will need to succeed:

Patent Counsel candidates will be required to have a Juris Doctorate (JD) from an accredited law school, and be licensed in any US State

Registered to practice before the United States Patent and Trademark Office (USPTO)

Bachelors degree or greater in Chemical, Mechanical or Electrical Engineering

Skills and abilities that will help you succeed in this role:

4+ years relevant experience in a law firm or corporate setting. Experience should include:

o drafting and prosecuting patent applications before the USPTO and international patent offices, preferably in the diagnostic, pharma or biological spaces

o drafting patentability, and as appropriate freedom to use and IP clearance opinions

o patent searching, landscaping and competitive intelligence

o drafting and negotiating of various forms of intellectual property agreements, including licenses, development, sponsored research and material transfer agreements etc.

Broad and detailed understanding of US IP laws and practices, with at least a working understanding of foreign IP laws and practices

Experience in managing large patent dockets

Demonstrated ability to work well in cross-functional teams and to interact effectively with management

Excellent oral and written communication skills

Ability to multitask among numerous projects

Experience dealing with outside counsel, and developing and managing IP budgets

Use of IP Analytics toolsets

Self-starter, with ability to work independently, initiate and coordinate projects and meet deadlines within a changing, fast-paced environment.

Excellent problem-solving skills, sound judgment and strong interpersonal, presentation and communication skills.

Detail oriented

Possess a can do attitude.

Strategic-thinker, goal- and team-orientated, able to handle difficult issues in a professional, assertive and proactive manner and history of working within cross-functional relationships in all levels of an organization.

Practical, business-oriented approach to problem-solving, tempered by an appreciation of legal complexity and risk.

Why IDEXX?

Were proud of the work we do, because our work matters. An innovation leader in every industry we serve, we follow our Purpose and Guiding Principles to help pet owners worldwide keep their companion animals healthy and happy, to ensure safe drinking water for billions, and to help farmers protect livestock and poultry from disease. We have customers in over 175 countries and a global workforce of over 10,000 talented people.

So, what does that mean for you? We enrich the livelihoods of our employees with a positive and respectful work culture that embraces challenges and encourages learning and discovery. At IDEXX, you will be supported by competitive compensation, incentives, and benefits while enjoying purposeful work that drives improvement.

Lets pursue what matters together.

IDEXX values a diverse workforce and workplace and strongly encourages women, people of color, LGBTQ+ individuals, people with disabilities, members of ethnic minorities, foreign-born residents, and veterans to apply.

IDEXX is an equal opportunity employer. Applicants will not be discriminated against because of race, color, creed, sex, sexual orientation, gender identity or expression, age, religion, national origin, citizenship status, disability, ancestry, marital status, veteran status, medical condition, or any protected category prohibited by local, state, or federal laws.

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