Senior IP Counsel

  • Full Time
  • Anywhere

Website Tempus

Data-driven precision medicine

Recent advancements in underlying technology have finally made it possible for AI to impact clinical care in a meaningful way. Tempus’ proprietary platform connects an entire ecosystem of real-world evidence to deliver real-time, actionable insights to physicians, providing critical information about the right treatments for the right patients, at the right time.

We are seeking a motivated and highly capable Senior IP Counsel to support and provide expertise in the areas of patent and trademark portfolio management, as well as strategic advice on a wide array of intellectual property matters.

As Senior IP Counsel, you will work closely with technologists and business stakeholders to identify and protect innovation, develop and execute IP portfolio strategy, and advise on complex transactions and agreements. You will be exposed to cutting-edge technologies intended to help in the care of patients with cancer and other diseases, and will work with extraordinarily collaborative and cross-functional technical teams of product managers, engineers, scientists, and patent professionals all working hard to help patients and advance research in disease.

Responsibilities:

  • Work proactively with engineers, technologists, and business teams to identify, capture, and protect innovations, including reviewing invention disclosures and conducting inventor interviews to assess inventiveness and patentability of concepts
  • Oversee and manage U.S. and foreign outside counsel in the preparation and prosecution of patent applications
    Oversee and manage the work of internal patent agent team
  • Oversee, manage, and maintain patent portfolios across multiple jurisdictions
  • Conduct patentability and freedom to operate assessments
    Oversee and assist outside counsel with patent litigation and other disputes that involve intellectual property issues
  • Oversee the prosecution and management of the global trademark portfolio
  • Advise on and assist in drafting and negotiating agreements, including licenses (in licensing and out licensing), joint development agreements, master service agreements, software-as-a-service agreements, and other technology agreements
  • Conduct diligence in connection with a range of strategic transactions, including substantial collaborations and M&A transactions
  • Provide counsel on the impact of intellectual property issues on business operations and activities by proactively identifying and implementing initiatives to minimize risk and advising on the development and implementation of intellectual property protection strategies
  • Advise and educate internal business clients on a broad range of intellectual property, licensing, and related legal issues
  • Assist in creating content for the intellectual property team websites, for the intellectual property team educational and outreach presentations, and for other intellectual property related communications within the company
  • Support business teams by providing intellectual property legal assistance as needed on a project-by-project basis
  • Forge relationships with business and technology leaders across the company

Required Qualifications:

  • JD degree from a high-quality, accredited law school and applicable state bar admission
  • Registration to practice before the USPTO
  • Curious, with excellent communication, organization, and judgement. Strong legal, analytical, and interpersonal skills.
  • 5+ years of demonstrated experience as a practicing patent attorney either in an in house legal department or at a law firm, including experience with drafting and prosecuting U.S. and foreign patent applications, portfolio management, and development and execution of intellectual property protection strategies
  • Demonstrated ability to manage complex projects and to meet deadlines
  • Ability to work at a fast pace and prioritize as needed

Preferred Qualifications:

  • Advanced degree in a technology and/or life sciences discipline.
  • Patent industry experience in technology and/or life sciences.
  • Prior experience with patent litigation.
  • Prior experience managing a team of legal and/or patent professionals.

To apply for this job please visit www.tempus.com.