Danaher Corporation Intellectual Property Counsel - (HYBRID, Torrance, CA) in Torrance, California
You may not have heard of chromatography, the science of separation, but it’s likely affected your life. Phenomenex’s chromatography products advance the future of scientific analysis and investigation, ensuring the quality of essentials like your food, water, shampoo, and even cold medication. We strive to provide the best tools and resources possible to help researchers improve global health and well-being, including award-winning liquid chromatography, gas chromatography, and sample preparation products. Be part of our global success, centered on a commitment to developing novel analytical chemistry solutions, unique marketing, and exceptional customer service and support.
Phenomenex is proud to work alongside a community of nine fellow Danaher Life Sciences companies. Together, we’re pioneering the future of science and medicine, developing products that enable researchers in the fight to save lives.
This role will have extensive interaction with Phenomenex R&D and Project and Product Management to support all aspects of the organization in intellectual property law. Examples include:
Serve as a trusted counsel on all IP issues (with a particular focus on invention mining, patentability, patent prosecution and freedom to operate), locally and globally, by giving solid and practical IP legal advice.
Maintain a solid understanding of Phenomenex’s businesses, technology and product goals, and challenges to establish and implement intellectual property strategies that facilitate those goals and minimize those challenges.
Align IP strategies with the Phenomenex’s business and strategic plans, including regularly conducting IP Review Boards to confirm alignment with evolving business and strategic plans.
Lead outside counsel in the preparation and prosecution of patent and trademark applications.
Negotiate, draft, and review agreements such as licenses, research agreements, collaboration agreements, confidentiality agreements and material transfer agreements.
Conduct freedom to operate assessments on emerging technology and due diligence in connection with a range of strategic transactions, including substantial collaborations and M&A transactions.
Conduct, advise and manage activities surrounding adversarial proceedings for third party IP, including IP litigation, European Oppositions and U.S. IPRs, in collaboration with both Danaher counsel and outside counsel.
Provide educational presentations and other training on IP matters to Phenomenex employees.
Occasional domestic and international travel may be required.
Education and/or Work Experience Requirements:
Minimum of 5 years of relevant experience in either a law firm or as in-house counsel is required
Juris Doctorate with excellent academic credentials from an accredited law school.
A minimum of 5 years of intellectual property legal experience in-house at a company or a combination of law firm and in-house experience to include:
Hands-on experience in drafting and negotiating IP-related agreements is required.
Hands-on experience with US patent prosecution matters in complex patent portfolio is required.
Experience with IP litigation in the US and preferably in other jurisdictions.
Active bar membership in at least one US jurisdiction.
Admitted to practice before the U.S. Patent and Trademark Office.
2 years of experience as in-house counsel is preferred.
An advanced degree in a biological science, chemistry, engineering (mechanical, or chemical) or other field relevant to the life sciences industry is strongly preferred
Knowledge and Skills:
Partners effectively with relevant stakeholders at all levels of the global organization and across all phases of research, development & commercialization to provide clear, strategic business counseling.
Approaches IP with a strategic mindset by anticipating future business, competitive and legal risks, and looks for creative solutions and opportunities.
Strong negotiation, communication, problem-solving, and analytical skills; able to communicate complex IP issues in business terms across a spectrum of partners.
Must have strong client service orientation.
Self-directed and proactive, comfortable executing on multiple projects independently and in collaboration with others.
Demonstrated high integrity and ethics in all dealings, non-political in conduct, while understanding internal and external dynamics.
When you join us, you’ll also be joining Danaher’s global organization, where 80,000 people wake up every day determined to help our customers win. As an associate, you’ll try new things, work hard, and advance your skills with guidance from dedicated leaders, all with the support of powerful Danaher Business System (https://www.danaher.com/how-we-work/danaher-business-system) tools and the stability of a tested organization.
Danaher Corporation and all Danaher Companies are committed to equal opportunity regardless of race, color, national origin, religion, sex, age, marital status, disability, veteran status, sexual orientation, gender identity, or other characteristics protected by law. We value diversity and the existence of similarities and differences, both visible and not, found in our workforce, workplace and throughout the markets we serve. Our associates, customers and shareholders contribute unique and different perspectives as a result of these diverse attributes.The EEO posters are available here (https://www.dol.gov/agencies/ofccp/posters) .We will ensure that individuals with disabilities are provided reasonable accommodation to participate in the job application or interview process, to perform crucial job functions, and to receive other benefits and privileges of employment. Please contact us at firstname.lastname@example.org to request accommodation. If you’ve ever wondered what’s within you, there’s no better time to find out.