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Danaher Corporation Sr. IP and Trade Secret Counsel in Sunnyvale, California

POSITION SUMMARY:

Cepheid is searching for a creative, dynamic and collaborative IP attorney to help define and drive the IP strategy for Cepheid’s innovations with an emphasis of protection of trade secrets.

The ideal candidate will thrive in a fast-paced environment and be capable of developing a comprehensive understanding of Cepheid’s technology and the ability to advise and guide teams on intellectual property topics including patent and trade secret protection. The successful candidate must be able to work independently and develop strong relationships with project teams and R&D associates.

This individual will work with R&D teams to identify and evaluate inventions for patentability and develop strategies to protect intellectual property, with an emphasis on trade secrets. Experience working on global teams is beneficial and the successful candidate will be expected to understand the importance of operating with a global mindset and model global and cultural sensitivity.

ESSENTIAL JOB RESPONSIBILITIES:

  • Integrate with the research and development teams to learn about our manufacturing processes and identifying key IP opportunities while enabling innovative protection strategies

  • Maintain strong interactions with R&D and project teams, to identify inventions and create and execute patent and trade secret strategies

  • Provide a full range of patent support functions, including patent preparation and prosecution, freedom-to-operate studies (e.g., infringement and validity analysis), and particularly, client counseling.

  • Develop and implement improved processes for protecting Cepheid's trade secrets while supporting global expansion

  • Provide patentability, FTO and related opinions in support of R&D programs and business development activities

  • Prepare and present training materials to business stakeholders to bolster invention disclosure, trade secret protection, and intellectual property protection efforts.

  • Provide landscape analyses and related support for R&D programs

  • Provide IP diligence for M&A and related activities

  • Monitor third party patent activity in areas of interest

  • Assist in offensive and defensive patent challenges in global patent offices

  • Educate and advise Cepheid associates on intellectual property issues

  • As a member of the IP team within Cepheid’s legal team, manage and/or participate in projects impacting Cepheid as a whole

MINIMUM REQUIREMENTS:

Education and Knowledge (in years):

  • Juris Doctor with excellent academic credentials from an accredited law school.

  • Admission to applicable state bar, registration as in-house counsel, or ability to gain admission or registration for either within 90 days.

  • Admitted to practice before the U.S. Patent and Trademark Office

  • At least 8 years of legal experience in the life sciences field in a law firm and/or in-house. Significant experience with transactions in the biotechnology or pharmaceutical industry advising clients on both business and legal issues strongly preferred.

  • A demonstrated working knowledge of trade secret law and practice.

  • A bachelor’s degree in a biological science, biochemistry, chemistry, engineering or other field relevant to life sciences or the medical diagnostic industry with strong preference for a PhD in an applicable science.

Experience and skills:

  • Ability to manage and serve a wide range of clients within the company by recognizing and responding quickly and pragmatically to urgent situations and clients.

  • Cost conscious, proactively manages matter budgets, and will drive strategies to minimize outside counsel spend without sacrificing quality of work product.

  • Prior experience developing or implementing trade secret policies and procedures is required.

  • Ability to think creatively, devise solutions to challenging problems and effectively drive legal and business issues to closure.

  • Strong analytical thinking and attention to detail.

  • Appropriately triage a heavy workflow, setting appropriate priorities with clients and delivering results efficiently.

  • Excellent writing, communication, organizational, problem-solving, and analytical skills.

  • Self-directed and proactive, comfortable executing on multiple projects independently and in collaboration with others

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    Danaher Corporation and all Danaher Companies are equal opportunity employers that evaluate qualified applicants without regard to race, color, national origin, religion, sex, age, marital status, disability, veteran status, sexual orientation, gender identity, or other characteristics protected by law. The “EEO is the Law” poster is available here (http://www.dol.gov/ofccp/regs/compliance/posters/pdf/eeopost.pdf) .

Operating Company: Cepheid

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