Senior Intellectual Property Counsel (Director)

Additional Locations:  N/A

Diversity - Innovation - Caring - Global Collaboration - Winning Spirit - High Performance

At Boston Scientific, we’ll give you the opportunity to harness all that’s within you by working in teams of diverse and high-performing employees, tackling some of the most important health industry challenges. With access to the latest tools, information and training, we’ll help you in advancing your skills and career. Here, you’ll be supported in progressing – whatever your ambitions.

About the role:

The Senior IP Counsel will support the company’s Endoscopy business segment and provide legal advice and service on patents, copyrights, trademarks, licensing, and related agreements. This includes evaluating patents and potential product infringement issues, overseeing outside counsel's preparation of patent applications and office action responses for filing in the U.S. Patent Office and foreign patent offices, participating in intellectual property aspects of mergers and acquisitions, representing the company in matters relating to intellectual property law, and providing other general legal advice where required. 

Your responsibilities include:

• Directing the company's patent, copyright, trademark and intellectual property protection.
• Directing the preparation and prosecution of the U.S. and foreign patent and trademark applications through outside counsel.
• Conducting IP due diligence and supporting negotiation and execution of intellectual property acquisition or license agreements with third parties related to M&A transactions, acquisition, and licensing of patents and technology.
• Reviewing third party patent portfolios for possible acquisition or licensing analysis.
• Reviewing third party patents for product freedom-to-practice issues and preparing or obtaining appropriate opinions from outside counsel.
• Providing legal advice in other areas such as: preparing and reviewing consulting agreements, confidentiality agreements, marketing promotional material, and other agreements.
• Reviewing status of outside counsel work by meeting, communicating, and reviewing documentation ensuring the work, methodology, and costs meet the company’s expectations.
• Facilitating Patent Review Board meetings by leading discussions, managing action items and delegating responsibility for follow-up items to committee members ensuring resolution of agenda topics.
• Providing IP training to BSC employees and raising IP awareness across the business through other outreach opportunities.
• Potentially managing and/or supervising the work product of more junior counsel and/or other IP legal professionals.
   

Requirements:

• JD admitted to a state bar in good standing
• Registered U.S. Patent Attorney
• Strong academic background
• 12+ years legal experience with reputable law firm or corporate legal department
• Minimum 2+ years patent prosecution experience
• Some IP litigation and M&A experience
• Experience drafting and negotiating IP agreements
• Excellent written and verbal communication skills, and the ability to communicate effectively with a wide variety of internal and external stakeholders including legal, R&D, marketing, outside counsel, senior leaders, and third-party contacts
• Excellent collaboration skills including the ability to build partnerships and work collaboratively with others to meet shared objectives
• Action-oriented and able to take on new opportunities and tough challenges with a sense of urgency, high energy, and enthusiasm

Preferred Qualifications:

• Medical device experience preferred
• Law firm and in-house experience preferred
• Experience in patent analytics, AI tools, docket management tools, and/or database searching

Requisition ID: 602309

As a leader in medical science for more than 40 years, we are committed to solving the challenges that matter most – united by a deep caring for human life. Our mission to advance science for life is about transforming lives through innovative medical solutions that improve patient lives, create value for our customers, and support our employees and the communities in which we operate. Now more than ever, we have a responsibility to apply those values to everything we do – as a global business and as a global corporate citizen.

So, choosing a career with Boston Scientific (NYSE: BSX) isn’t just business, it’s personal. And if you’re a natural problem-solver with the imagination, determination, and spirit to make a meaningful difference to people worldwide, we encourage you to apply and look forward to connecting with you!