Assistant IP Counsel

Hologic is seeking an Intellectual Property (IP) Counsel to support the fast-paced Breast and Skeletal Health Solutions (BSHS) Division. As a leading innovator in women’s health, Hologic empowers people to live healthier lives everywhere, every day. Our BSHS Division offers a broad portfolio of solutions for breast cancer care primarily in the areas of radiology, breast surgery, pathology and treatment, as well as products that evaluate bone density and perform body composition. In this position you will be responsible for advising internal business and legal partners and managing outside counsel on a wide range of intellectual property issues involving patents, trademarks, trade secrets, and copyrights. The position will be located at Hologic’s headquarters in Marlborough and will report to Senior Intellectual Property Counsel for the BSHS Division. 

Key Responsibilities:

• Manage a strategic global intellectual portfolio (including patents, trademarks, copyrights, and trade secrets) in support of Hologic’s business objectives
• May conduct competitive intelligence, landscape searches, patentability reviews, and freedom-to-operate analyses relating to R&D activities and product releases
• Conduct trademark clearance searches and regularly perform trademark and copyright compliance review for publications, marketing materials, and product releases
• Oversee trademark, copyright, and trade secret matters, ensuring compliance with relevant laws and regulations
• Review and assist in drafting agreements relating to the use, transfer or ownership of IP, including non-disclosure, material transfer, professional services, research, collaboration, and license agreements
• May participate in conducting periodic training for employees on invention disclosures, intellectual property topics, litigation preparation, confidentiality, and the safeguarding of trade secrets
• Collaborate with outside counsel to develop and maintain the patent and trademark portfolio.
• Establish and maintain good working relationships with R&D, marketing, business development, and commercial legal counsel.
• Review marketing and promotional literature for the business unit.
• Assist in areas of due diligence, including conducting freedom-to-operate reviews for acquisition targets.
• Manage IP litigation and disputes as they arise in conjunction with outside counsel.

Qualifications:

• Demonstrated experience in developing and maintaining a patent portfolio.
• Experience in conducting and reviewing patentability and freedom-to-operate searches. 
• Some experience in drafting and negotiating agreements that include IP terms is preferred.
• Prior experience in managing a trademark portfolio is desired.
• Possession of excellent interpersonal, communication, and collaborative skills with the ability to impact and influence others at all levels.
• Ability to initiate, embrace, and drive change in a dynamic environment.
• Possession of organizational skills and the ability to manage numerous projects and conflicting demands.
• Business acumen and ability to distill complex legal and technical concepts into practical legal advice.

Education and Experience:

• JD required from an accredited law school, and registered to practice before the USPTO and a state bar (MA preferred).
• Technical background in Mechanical Engineering, Biomedical Engineering, Software, Electrical Engineering, or Physics and associated work experience preferred.
• At least 3-7 years of law firm and/or in-house experience required.

Why join Hologic?

We are committed to making Hologic the destination for top talent. For you to succeed, we want to enable you with the tools and knowledge required and so we provide comprehensive training when you join as well as continued development and training throughout your career.

The annualized base salary range for this role is $149,400 to $249,000 and is bonus eligible.  Final compensation packages will ultimately depend on factors including relevant experience, skillset, knowledge, geography, education, business needs and market demand.

Agency and Third-Party Recruiter Notice: Agencies that submit a resume to Hologic must have a current executed Hologic Agency Agreement executed by a member of the Human Resource Department. In addition, Agencies may only submit candidates to positions for which they have been invited to do so by a Hologic Recruiter. All resumes must be sent to the Hologic Recruiter under these terms or they will not be considered.

Hologic, Inc. is proud to be an Equal Opportunity Employer inclusive of disability and veterans.

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