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Counsel II, Intellectual Property Job

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Date: Nov 22, 2018

Location: Marlborough, MA, US, 01752

Company: Boston Scientific

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Purpose and Passion • Comprehensive Benefits • Life-Work Integration • Community • Career Growth

At Boston Scientific, you will find a collaborative culture driven by a passion for innovation that keeps us connected on the most essential level. With determination, imagination and a deep caring for human life, we’re solving some of the most important healthcare industry challenges. Together, we’re one global team committed to making a difference in people’s lives around the world. This is a place where you can find a career with meaningful purpose—improving lives through your life’s work.


About the role:

Boston Scientific’s IP Counsel II will support the Marlborough based, Endoscopy 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, participate in intellectual property aspects of mergers and acquisitions, represent the company in matters relating to intellectual property law, and provide other general legal advice where required.  


Your responsibilities include:

• 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 through outside counsel.

• Responsible for preparing intellectual property acquisition or license agreements with third parties related to M&A transactions, acquisition, and licensing of patents and technology.

• Reviews third party patent portfolios as requested for possible acquisition or licensing analysis.

• As directed, reviews third party patents for product freedom-to-practice issues and prepares or obtains appropriate opinions from outside counsel.

• Provides legal advice in other areas such as: preparing and reviewing consulting agreements, confidentiality agreements, marketing promotional material, and other agreements, as directed.

• Reviews status of outside counsel work by meeting, communicating, and reviewing documentation ensuring the work, methodology, and costs meet the company’s expectations.

• 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.

• Provide IP training to BSC employees.

• May manage and/or supervise the work product of more junior counsel and/or other IP legal professionals.

• Exposure to clients will be managed according to counsel’s demonstrated capability and will receive oversight from more senior counsel.


What we’re looking for:

Basic Qualifications

• JD admitted to a state bar in good standing

• Registered US Patent Attorney

• Strong academic background, including undergraduate and J.D. degree

• 6-10 years legal experience with reputable law firm or corporate legal department

• 4-5 years patent prosecution experience

• 3-4 years IP Litigation or M&A Experience     

• Biomedical, mechanical, chemical or related engineering degree preferred

• Medical device experience preferred



About us

As a global medical technology leader for more than 35 years, our mission at Boston Scientific (NYSE: BSX) is to transform lives through innovative medical solutions that improve the health of patients. If you’re looking to truly make a difference to people both around the world and around the corner, there’s no better place to make it happen.


Boston Scientific is an Equal Opportunity Employer – Race, Color, Religion, Sex, Sexual Orientation, Gender Identity, National Origin, Disability, Veteran


Requisition ID: 436821


Nearest Major Market: Boston

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