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IP, Counsel

Remote: 
Full Remote
Experience: 
Mid-level (2-5 years)
Work from: 
United States

Offer summary

Qualifications:

Bachelor’s degree in life sciences or JD, 2+ years of patent prosecution experience, In-depth knowledge of molecular diagnostics, US, UK or European patent attorney qualifications.

Key responsabilities:

  • Monitor threats to freedom to operate
  • Draft and prosecute invention filings worldwide
NeoGenomics Laboratories logo
NeoGenomics Laboratories Large https://neogenomics.com/
1001 - 5000 Employees
About NeoGenomics Laboratories
NeoGenomics Laboratories is a leading cancer diagnostic reference laboratory that has provided high-quality cancer testing and partnership programs to pathologists and oncologists for over 10 years. We work every day to achieve our common purpose of saving lives by improving patient CARE through Communication, Accuracy, Reliability, and Efficiency. Our areas of expertise include cancer cytogenetics with industry-leading turnaround times; hematologic and solid tumor FISH testing with the largest menu of technical-only services available; 10-color flow cytometry; IHC supported by an extensive antibody library; and over 100 molecular oncology tests comprising the most comprehensive combination of multiparameter profiles and targeted biomarker tests in the industry. Our technical-only testing programs feature on-demand or live training and are available to pathologists who wish to sign out FISH, flow cytometry, and/or IHC. NeoGenomics’ extremely fast test development cycle means we are highly responsive to therapy development and guideline changes, and test design always involves a balance of convention and innovation. We support clients in many cancer-related market segments, to include: hospital and private pathology laboratories, office-based oncologists, CRO / Biopharmaceutical development organizations, academic institutions / teaching hospitals, and several more. CONNECT WITH US Online: neogenomics.com Twitter: https://twitter.com/NeoGenomics Facebook: facebook.com/neogenomics
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Job description

Description

Are you motivated to participate in a dynamic, multi-tasking environment? Do you want to join a company that invests in its employees? Are you seeking a position where you can use your skills while continuing to be challenged and learn? Then we encourage you to dive deeper into this opportunity.
 
We believe in career development and empowering our employees. Not only do we provide career coaches internally, but we offer many training opportunities to expand your knowledge base! We have highly competitive benefits with a variety of HMO and PPO options. We have company 401k match along with an Employee Stock Purchase Program. We have tuition reimbursement, leadership development, and even start employees off with 16 days of paid time off plus holidays. We offer wellness courses and have highly engaged employee resource groups. Come join the Neo team and be part of our amazing World Class Culture!
 
NeoGenomics is looking for an IP Counsel who wants to continue to learn in order to allow our company to grow.
  
Now that you know what we're looking for in talent, let us tell you why you'd want to work at NeoGenomics: 
As an employer, we promise to provide you with a purpose-driven mission in which you have the opportunity to save lives by improving patient care through the exceptional work you perform. Together, we will become the world's leading cancer reference laboratory.
 
Position Summary: 
The IP Counsel role will provide expert counsel and advice to cross-functional stakeholders, as well as leadership on IP matters, including IP opportunities, risks, and mitigation strategies, and involve all the usual aspects of managing patent drafting, prosecution, and defense; IP disputes, litigation, and oppositions; trademark and copyright matters; as well as FTO monitoring and associated stakeholder feedback. The role will require in-depth knowledge of molecular diagnostics and specifically next-generation sequencing. As is usual in an in-house biotech role, there will be IP-related activities in reviewing and drafting contracts and approving publications for the enterprise.
 
Core Responsibilities: 
  • Actively monitoring threats to the Company’s freedom to operate (FTO) and continually evaluating and strengthening the FTO IP position
  • Evaluate competitor threats and strategic competitive IP opportunities, responding accordingly, leading and supporting the development of a strategic offensive/defensive patent portfolio
  • Identify patent opportunities to protect the Company’s technologies and new product opportunities
  • Work proactively with the Research and Development teams to identify, obtain, organize, distill, and communicate technical data for use in patent filing.
  • Draft and prosecute invention filings worldwide, working with external counsel as required
  • Evaluate, negotiate, and draft intellectual property agreements, including licensing agreements, partnering agreements, service agreements, and development agreements.
  • Ensure company activities align with the IP strategy, including business agreements and publications
  • Enforce inventors' rights if patents are infringed and direct any patent disputes, formulating litigation strategies working with external counsel as required.
  • Build strong relationships across the company including Product Management and Research & Development (R&D) to lead and support the alignment of IP strategies with business objectives
Additional Responsibilities (may be assigned):
  • Evaluate competencies of external counsel and provide recommendations to the General Counsel and Assistant General Counsel regarding changes
  • Stay informed of relevant legal developments impacting the business and advise the AGC/GC accordingly
  • Operating successfully in an agile and cooperative manner, while ensuring successful delivery of key business objectives
  • Follows all applicable company and departmental policies and procedures
  • Communicates effectively with all levels of management, legal staff and the broader team including R&D
  • Adheres to the company’s core values, safety, and compliance policies and procedures.
  • Ready, willing, and able to make strategic decisions, including during adversarial proceedings and to assume responsibility and accountability
 
Experience, Education and Qualifications: 
  • Bachelor’s degree in life sciences, preferably in molecular biology or a closely related field, and JD; or
  • Masters or PhD in relevant technical area preferred with IP experience
  • US, UK or European patent attorney qualifications and registration with an Intellectual Property Office (e.g., USPTO, CIPO, or EPO) required 
  • Minimum 2+ years’ post-qualification experience
  • Litigation or commercial contracting experience preferred
  • Patent prosecution experience required 
  • Experience with Molecular diagnostics and preferentially Next-Generation Sequencing.
  • Strong technical and scientific knowledge and expertise relevant to Neo’s technology domains, e.g. in molecular biology, molecular genetics and molecular diagnostics, and able to critically evaluate technologies for IP opportunities and vulnerabilities
  • Able to analyze large amounts of scientific, legal, and commercial information and reach logical, well-reasoned conclusions. Need to be clear-thinking and rigorous in analyses, critical of data and evidence. Able to take a comprehensive approach, coming to grips with both the details of a situation and its ‘big picture’ implications
  • Ability to work collaboratively with other Legal group members and with other functions (R&D, Commercial, Corporate Development, Marketing) in the organization, and successfully manage outside counsel
  • Creative and lateral thinking, for instance in patent construction and prosecution, in considering competitor perspective, and in legal disputes.
  • Ability to apply case law, provide practical advice and suggestions to the business on risks and strategy
  • Strong time management and organizational skills, with the ability to handle multiple strategic priorities and meet deadlines
  • Works independently, prioritizes effectively, and ensures accuracy while completing tasks on time

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

                Required profile

                Experience

                Level of experience: Mid-level (2-5 years)
                Spoken language(s):
                English
                Check out the description to know which languages are mandatory.

                Hard Skills

                Next-Generation SequencingPatent ProsecutionIntellectual PropertyMolecular DiagnosticsCommercial ConstructionLawsuitsPatent DraftingTechnical AnalysisContract Negotiation

                Other Skills

                • Creative Thinking
                • Lateral Thinking
                • Collaboration
                • Communication
                • Analytical Skills
                • Time Management
                • Organizational Skills
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