Patent Counsel (Marlborough) – Boston Scientific

Boston Scientific transforms lives through innovative medical solutions that improve the health of patients around the world.  As a global medical technology leader for more than 30 years, we advance science for life by providing a broad range of high performance solutions that address unmet patient needs and reduce the cost of healthcare.

Boston Scientific’s Counsel II will support the Marlborough based business and provide legal advice and service on patents, copyrights, trademarks, licensing and related agreements. This position will evaluate patents and potential product infringement issues, prepare or oversee outside counsel’s preparation of patent applications and office action responses for filing in the U.S. Patent Office and foreign patent offices, represent the company in matters relating to intellectual property law, and provide other general legal advice where required.  The position will support the Endoscopy and/or Urology/Women’s Health businesses.

Key responsibilities:

• Exposure to clients will be managed according to counsel’s demonstrated capability and will receive oversight from more senior counsel.
• Responsible for the company’s patent, copyright, trademark and intellectual property protection.
• Responsible for the preparation and prosecution of the U.S. and foreign patent and trademark applications in house and through outside counsel.
• Reviews status of outside counsel work by meeting, communicating, and reviewing documentation ensuring the work, methodology, and costs meet the company’s expectations.
• As directed, reviews third party patents for product freedom to practice issues and prepares or obtains appropriate opinions from outside counsel.
• Facilitates the Patent Review Boards meetings by leading discussions, managing action items and delegating responsibility for follow-up items to committee members ensuring resolution of agenda topics.
• Provides legal advice in other areas such as: preparing and reviewing consulting agreements, confidentiality agreements, marketing promotional material, and other agreements, as directed.
• Responsible for preparing license agreements with third parties related to licensing of patents and technology.
• Reviews third party patent portfolios as requested for possible acquisition or licensing analysis.
• Provide IP training to BSC employees.
• May manage and/or supervise the work product of more junior counsel and/or other IP legal professionals.

Quality System Requirements

In all actions, demonstrates a primary commitment to patient safety and product quality by maintaining compliance to the Quality Policy and all other documented quality processes and procedures.

For those individuals that supervise others, the following statements are applicable:

• Assures that appropriate resources (personnel, tools, etc.) are maintained in order to assure Quality System compliance and adherence to the BSC Quality Policy.
• Establishes and promotes a work environment that supports the Quality Policy and Quality System.

Qualifications:

Education and Experience

• JD admitted to a state bar in good standing
• Registered US Patent Attorney
• Strong academic background, including undergraduate and J.D. degree
• 5 – 8 Years legal experience with reputable law firm or corporate legal department
• 4 – 5 Years patent prosecution experience
• 3 – 4 years IP Litigation Experience
• Biomedical, mechanical, chemical or related engineering degree preferred
• Medical device experience preferred
• JD admitted to a state bar in good standing