Details
Posted: 29-Mar-22
Location: Waltham, Massachusetts
Type: Full Time
Required Education: 4 Year Degree
Categories:
Attorney
Biotech
Corporate
Intellectual Property
Additional Information:
Telecommuting is allowed.
Internal Number: 197779BR
Thermo Fisher Scientific Inc. is the world leader in serving science, with annual revenue of approximately $40 billion. Whether our customers are accelerating life sciences research, solving complex analytical challenges, increasing productivity in their laboratories, improving patient health through diagnostics or the development and manufacture of life-changing therapies, we are here to support them. Our global team of more than 100,000 colleagues delivers an unrivaled combination of innovative technologies, purchasing convenience and pharmaceutical services through our industry-leading brands, including Thermo Scientific, Applied Biosystems, Invitrogen, Fisher Scientific, Unity Lab Services, Patheon and PPD. For more information, please visit www.thermofisher.com.
Thermo Fisher Scientific’s Mission is to enable our customers to make the world healthier, cleaner and safer. Accomplishing that Mission includes IP diligence supporting acquisitions and other corporate transactions that grow the company’s portfolios of innovative products and related intellectual property (IP). This role includes capturing intelligence on competitors to guide innovation strategies and IP risk management.
To support these objectives within its life sciences businesses, Thermo Fisher has an exciting opportunity for Director-level IP counsel with two primary responsibilities: lead and coordinate IP diligence efforts supporting corporate transactions (acquisitions, divestitures, minority investments, etc) and lead IP competitive intelligence and landscaping analysis work for life sciences business groups for use in guiding business investment.
In this role you will:
- Distill, prioritize and quantify IP risks and advise on risk mitigation in the context of M&A
- Work with the team to analyze IP landscapes to find opportunities for and risks to commercial growth (e.g., complementary application areas; new markets)
- Prepare concise and cogent written materials and presentations facilitating smarter business decision-making
- Provide pragmatic advice grounded in sound business and legal judgment; and work collaboratively across organizational and geographic boundaries, building scalable processes as you go
At Thermo Fisher, we thrive in a culture of learning and development and are looking for a candidate who can do the same. The successful applicant for this position does not need to have all of the skills and experiences described herein but should have considerable exposure to or experience with many of them and a strong desire to learn new skills. Success will require pragmatic judgment, adaptable risk tolerance, strong communication skills, a passion for continuous improvement, and an understanding of – and eagerness to continually learn about – the broad diversity of life science technologies crucial to Thermo Fisher’s growth.
Primary Responsibilities
- Lead IP diligence supporting M&A, including identifying and addressing IP issues and risks and continuing to build scalable practices in support of the same; collaborate with internal teams for M&A, corporate development, R&D and IP to adapt diligence strategies and reporting to meet business objectives and risk tolerances.
- Improve existing IP diligence processes and lead development of new ones, including centralized competitive intelligence cataloging and best approaches that tolerate/balance IP risk against the business value objectives.
- Play a leading role in competitive analysis and IP landscaping within the businesses to identify new invention opportunities and commercial growth segments. Provide pragmatic and actionable advice on competitor IP risks and mitigation strategies.
- Collaborate with legal teams on IP integration or divestiture through the lifecycle of corporate transactions, including integrating acquisitions and transitioning IP assets and risks acquired through M&A.
- Other duties as assigned to support Thermo Fisher’s Mission and the IP department, which may include patent monetization and out-licensing.
- This role will closely collaborate with Thermo Fisher’s internal Legal M&A and IP teams, corporate development, outside counsel, and R&D teams. Law firm candidates are encouraged to apply
- Law degree and 7+ years of diverse, well rounded IP practice that includes significant experience with at least two of the following: diligence for M&A transactions, IP strategy development, IP transactions/licensing, and IP litigation or dispute management.
- Undergraduate degree in chemical, physical or biological sciences.
- Must know your way around a patent specification, have experience analyzing patent claims coverage against products, and be skilled at describing the risks and finding solutions to mitigate risks.
- Strong situational awareness to adjust risk tolerance and re-calibrate strategies around deal requirements and priorities.
- Outstanding interpersonal and communication (written and verbal) skills, including tailoring communication approaches to audiences of varying legal and technical sophistication.
- Strong initiative, collaborative/team instinct, and can-do mindset.
Position can be based in either Carlsbad, CA (San Diego area) or Waltham, MA (Boston area).
Thermo Fisher Scientific is an EEO/Affirmative Action Employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, disability or any other legally protected status.