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Intellectual Property Counsel
Company: Leica Biosystems
Location: Vista, CA
Employment Type: Full Time
Date Posted: 08/01/2022
Expire Date: 08/31/2022
Job Categories: Computers, Software, Construction, Mining and Trades, Engineering, Healthcare, Practitioner and Technician, Information Technology, Legal, Manufacturing and Production, Sales, Science, Counseling, Research & Development, Medical
Job Description
Intellectual Property Counsel

About Leica Biosystems

Leica Biosystems (LBS) associates know that every moment matters when it comes to cancer diagnostics. When you come to work, youre helping develop solutions that enable accurate diagnoses to turn anxiety into answers. Join our diverse, global team of talented people, and be inspired to grow every day.

Learn more about Leica at www.leicabiosystems.com

Position Summary

The Intellectual Property (IP) Counsel acts as the primary IP legal resource for the Imaging portion of the Advanced Staining and Imaging business unit and the Artificial Intelligence / Machine Learning strategic business unit (BUs) with a particular emphasis on digital pathology, imaging technology, software, and artificial intelligence in the cancer diagnostic industry. This position will work directly with engineers, scientists, marketers, and others involved in research and product development on IP matters as well as sales and the global Leica Biosystems IP/Legal Team.

The IP Counsel will develop an in-depth understanding of the Companys intellectual property, products and business, and will possess the ability to evaluate and balance both legal and business factors when providing legal advice. Based on a degree in Electrical or Biomedical Engineering or Computer Science (or comparable discipline), this candidate will demonstrate a broad knowledge base in areas appropriate for an experienced in-house IP Counsel at a medical technology company.

The successful candidate will have hands-on IP experience in the medical imaging, digital pathology, and artificial intelligence software space with demonstrated success in giving practical, pragmatic, cost-effective, straightforward legal advice to in-house clients. This individual values idea sharing and has a growth mindset, works well in a team environment, and is willing to try new or different approaches to problem solving, development, and IP management. This individual will have experience working on or leading a global team and communicating effectively with business partners. This individual understands the importance of operating with a global mindset and models global and cultural sensitivity.

Major Responsibilities

  • Serves as trusted legal counsel on all IP issues and as the primary IP Legal resource for the BUs R&D and sales teams (with a particular focus on invention mining, IP portfolio development and management, product development lifecycle, training teams on IP matters & best practices, patentability, patent preparation and prosecution, freedom to operate, landscape searches, trademarks, trade secrets, and copyrights), locally and globally, by providing solid, timely, proactive, and practical IP legal advice
  • Builds and maintains a comprehensive understanding of Leica Biosystems intellectual property, products and businesses, its goals and challenges, and identifies and successfully executes appropriate IP strategies to achieve those goals and minimize those challenges
  • Aligns IP strategies with business and strategic plans, including regularly attending and providing IP legal advice at patent review committees to confirm alignment with evolving IP, business, and strategic plans
  • Manages outside counsel and prepares and prosecutes patent applications with a focus on quality, output, and cost across various countries related to cancer diagnostic technologies, including digital pathology, medical imaging, and artificial intelligence software
  • Drafts and negotiates IP-related agreements (e.g., licensing agreements, master service agreements, SDKs, EULAs, collaboration agreements, tech transfer agreements, NDAs, etc.)
  • Assists with mergers and acquisitions including due diligence, deal agreements, and integration
  • Willing to work on the smallest and simplest, as well as the most complex, IP matters
  • Researches and develops understandable and usable presentations on relevant IP landscapes

Required Qualifications:

  • Juris Doctor
  • Bachelors Degree in Computer Science, Electrical Engineering, or Biomedical Engineering (or related field equivalent)
  • Registered to practice before the USPTO
  • Active Bar Admission in good standing in at least one US jurisdiction
  • 5-8 years post-bar admission in a law firm and/or in-house experience for a medical technology company with hands-on experience drafting, prosecuting, and managing US and international patent applications directed to digital pathology, medical imaging, and cancer diagnostics including artificial intelligence software
  • Experience drafting and negotiating IP-related agreements (e.g., licensing agreements, master service agreements, collaboration agreements, tech transfer agreements, NDAs)
  • Experience counseling clients on patentability, patent infringement, patent validity matters, freedom to operate, landscape searches, invention mining, portfolio development & management, trademark, trade secret, and copyright matters
  • Demonstrated success in being easy to work with and giving practical, timely, proactive, pragmatic, cost-effective, and straightforward legal advice to clients
  • Has a growth mindset, works well in a team environment, and is willing to try new or different approaches to problem solving, development, and IP management

Preferred Qualifications:

  • Experience with M&A and related due diligence
  • Understanding of FDA regulations for medical devices
  • In-house experience with a medical technology company
  • Experience supporting IP litigation

Travel: Approximately 30% travel Domestic and International. Subject to adjustment dependent on company travel policy post COIVD-19 pandemic.



When you join us, youll also be joining Danahers global organization, where 80,000 people wake up every day determined to help our customers win. As an associate, youll try new things, work hard, and advance your skills with guidance from dedicated leaders, all with the support of powerful 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.

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 applyassistance@danaher.com to request accommodation.

If youve ever wondered whats within you, theres no better time to find out.

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Company Name: Leica Biosystems
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Website: https://jobs.danaher.com/global/en/...
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