Intellectual Property Counsel

Waltham MA US
Jul 14, 2016
Oct 19, 2016
Organization Type
Full Time
Intellectual property support for the various PerkinElmer businesses, which are comprised of a number of businesses located in different global locations and doing business internationally in more than 150 countries. The PerkinElmer businesses today provide a broad offering of products to improve the health and safety of people and the environment, including laboratory instruments, reagents, services and software to facilitate life sciences research from drug discovery to academic research.

  • Drive PerkinElmer's patent monetization efforts by identifying potential licensing targets, performing necessary product analysis, approaching targets, and negotiating license agreements.Manage at least one junior attorney in monetization efforts.
  • Perform IP due diligence on acquisition targets by working with and reporting into a cross-functional team; review and revise IP provisions of stock/asset purchase agreements and associated schedules; participate in integration of acquired targets to ensure complete integration of all IP matters.
  • Conduct freedom-to-operate (“FTO”) analysis.
  • Provide general IP guidance to non-IP members of legal team and clients with respect to patents, trademarks, copyright, and trade secrets.
  • Manage IP litigation by driving internal discovery activities, reviewing outside counsel work product (briefs, etc.), and managing overall strategy and budget.

    Authority & Decision Making: Limited initial authority, with potential for greater authority based on performance. Good decision making and judgment ultimately a critical success factor.

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