Intellectual Property Counsel

San Diego, CA, United States

Hologic (NASDAQ: HOLX) is an innovative medical technology company whose purpose is to enable healthier lives everywhere, every day. While we discover and develop groundbreaking products and services that benefit everyone, we are especially passionate about those that advance women’s health and well-being. This allows us to be a company that prospers, grows and empowers women to experience healthier lives.

We are seeking an Intellectual Property Counsel who will be responsible for providing legal services and advice on a variety of IP-related matters for the diagnostics business unit of Hologic, which is located in San Diego, California.

DUTIES AND RESPONSIBILITIES

• Develop and manage a strategic, global intellectual property portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic’s business objectives

• Conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases

• Conduct trademark clearance searches and regularly perform trademark and copyright compliance review for publications, marketing materials, and product releases

• Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations

• Draft and prosecute patent applications in the biological, chemical and mechanical arts

• Supervise outside counsel engaged in procuring, defending, and asserting IP rights, including IP-related litigation and post-grant challenges, including inter partes review, post grant review, oppositions and invalidation appeals

• Acquire detailed understanding of the technologies, products and R&D activities of the business

• Counsel key technical and business personnel on IP portfolio development and strategies, adversarial proceedings, competitive intelligence, commercial activities, and licensing opportunities

• Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements

• Conduct periodic training for employees on invention disclosures, intellectual property topics, litigation preparation, confidentiality, and the safeguarding of trade secrets

EDUCATION AND EXPERIENCE

• A degree in biology, biochemistry or chemistry is required (Ph.D or B.S with 2+ years of practical laboratory experience

• J.D. from an accredited law school and 3+ years of experience as a practicing attorney in the life sciences industry (law firm and/or in-house)

• Registered patent attorney and member in good standing of at least one state bar (preferably CA)

So why join Hologic?

We are committed to making Hologic the company where top talent comes to grow. For you to succeed, we want to enable you with the tools and knowledge required and so we provide comprehensive training when you join as well as continued development and training throughout your career.

Hologic offers a dynamic and innovative work environment along with excellent benefits that include sponsored medical/dental/vision benefits, bonus potential, 401(k) w/company match, employee stock purchase plan, paid vacation/sick time/holidays, assistance with continuing education, on-site fitness center, and our own Waterfall Café.

The annualized base salary range for this role is $142,000 to $238,000 and is bonus eligible. Final compensation packages will ultimately depend on factors including relevant experience, skillset, knowledge, geography, education, business needs and market demand.

Agency and Third Party Recruiter Notice: Agencies that submit a resume to Hologic must have a current executed Hologic Agency Agreement executed by a member of the Human Resource Department. In addition Agencies may only submit candidates to positions for which they have been invited to do so by a Hologic Recruiter. All resumes must be sent to the Hologic Recruiter under these terms or they will not be considered.

Hologic, Inc. is proud to be an Equal Opportunity Employer inclusive of disability and veterans.

#LI-LL1