Principal Intellectual Property Counsel

Posted:
10/17/2024, 5:29:53 AM

Location(s):
Chelmsford, Massachusetts, United States ⋅ Massachusetts, United States

Experience Level(s):
Expert or higher ⋅ Senior

Field(s):
Legal & Compliance

Corporate

At ZOLL, we're passionate about improving patient outcomes and helping save lives.

We provide innovative technologies that make a meaningful difference in people's lives. Our medical devices, software and related services are used worldwide to diagnose and treat patients suffering from serious cardiopulmonary and respiratory conditions.

Job Summary
The Principal Intellectual Property Counsel will join its growing team of in-house IP professionals. This role will be located at ZOLL's headquarters in Chelmsford, and be primarily responsible for preparing and prosecuting patent applications in the United States and overseas for its Cardiac Management Solutions Division, including the ZOLL TherOx subsidiary. The candidate will have leading responsibility for managing a multi-faceted patent portfolio, including managing external counsel, be a key interface with business leaders for strategic IP matters, engineers and technical staff in the identification, collection and review of ideas for patentability. The position will report to ZOLL's Senior Intellectual Property Counsel for the Cardiac Management Solutions Division.

Essential Functions

Strategic patent portfolio management including interfacing with business leaders concerning IP matters, preparation and prosecution of patent applications, managing brainstorming sessions, preparation of new ideas for consideration by ZOLL’s IP review committee, product clearance and intellectual property due diligence. Have in-depth technical and patent expertise in areas of strategic importance to ZOLL.


Required/Preferred Education and Experience

  • Bachelor's Degree required

  • JD required

  • 10+ years of relevant experience required

  • At least 5-10 years’ experience in preparing and prosecuting patent applications with a law firm or corporation


Knowledge, Skills and Abilities

  • Must be admitted to at least one state bar

  • Must be registered to practice before the U.S. Patent and Trademark Office

  • Must have a background in electrical, electronics and/or software engineering. Background in Medical Devices is a plus.

  • Must have previous experience in strategic management of patent portfolios

  • Prior experience as in-house counsel or maintaining a well-rounded IP practice preferred (e.g., strategic IP counseling and/or supporting IP aspects of corporate matters)

  • Must be able to draft patent applications in coordination with inventors

  • Ability to understand, analyze, and communicate complex technologies in oral and written form

  • Strong interpersonal skills

  • Some experience with intellectual property due diligence and product clearance is preferred

  • Experience as a Patent Examiner and/or patent searcher is preferred

  • Some experience managing a trademark portfolio is preferred


Physical Demands
The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job.

  • Standing - Occasionally

  • Walking - Occasionally

  • Sitting - Constantly

  • Talking - Occasionally

  • Hearing - Occasionally

  • Repetitive Motions - Frequently


ZOLL is a fast-growing company that operates in more than 140 countries around the world. Our employees are inspired by a commitment to make a difference in patients' lives, and our culture values innovation, self-motivation and an entrepreneurial spirit. Join us in our efforts to improve outcomes for underserved patients suffering from critical cardiopulmonary conditions and help save more lives.

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All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or status as a protected veteran.