Patent Counsel

Working Location: MASSACHUSETTS, WESTBOROUGH
Workplace Flexibility: Hybrid
Are you looking for a company that cares about people's lives and health, including yours? Let's inspire healthier lives, together.
Olympus, a leading medical technology company, has focused on making people's lives better for over 100 years.
Our Purpose is to make people's lives healthier, safer, and more fulfilling.
Our Core Values are reflected in all we do: Integrity - Empathy - Agility - Unity - Long-Term View
We deliver on our purpose and our core values by staying True to Life.
Job Description
Responsible for all aspects of U.S. and foreign patent prosecution for U.S. based Olympus entities in the medical field, including drafting applications and responding to Office Actions from the United States Patent and Trademark Office in coordination with outside Patent Counsel. Will be the primary interface with engineers and technical staff regarding new patent filings. Will conduct competitive landscape searches and review prior art with R&D staff at regular meetings. Will be responsible for the prosecution process from invention disclosure to the issued patent. Manage IP docketing and database in coordination with support staff. Conduct patent clearance studies and patentability searches. Will assist with training programs for engineers on topics such as patent searching. Will coordinate with Global IP team members on prosecution issues that impact global business objectives. Will assist n developing and executing portfolio management strategy. Responsible for other litigation, licensing, acquisition or partnership due diligence as necessary. Handle intellectual property matters arising from the daily business operation of Olympus Corporation of the Americas, including Olympus Surgical Technologies Americas (the Corporation) , including negotiating and drafting contracts on behalf of the Corporation on a variety of intellectual property matters. Provide professional counsel and service to the medical and surgical product groups of other companies of the Olympus Group in intellectual property matters.
Job Duties

• Manage all aspects of US prosecution including drafting applications and responses to Office Actions.
• Manage intake of patent clearance study requests and conduct search for freedom to operate.
• Manage intake of invention disclosures and review disclosures for patentability.
• Coordinate prosecution matters with outside counsel.
• Instruct foreign patent associates on foreign filings and office actions.
• Conduct infringement and invalidity studies in support of litigation.
• Manage docket and database management. Train engineers on patent issues.
• Participate in M&A team for due diligence and freedom to operate for acquisitions or licenses.
• Create patent landscapes and design guidance documents.
• Drafting and negotiating various intellectual property related agreements, including licenses and transactional documents.
• Preparing and revising patent clearance studies.
• Providing counsel on patent infringement and patent clearance opinions.
• Assisting in the management of the Corporation's worldwide intellectual property portfolio.
• Supervising and providing guidance to outside counsel when retained to assist with the foregoing responsibilities.
• Works with research and development and marketing personnel, as well as patent agents and senior management, to define and implement intellectual property strategy for the Corporation. Performs other related duties as directed.

Job Qualification
Required:

• Minimum Bachelor's of Science is required.
• Juris doctor degree from an accredited law school. Member of US patent bar and at least one State bar.
• Minimum of 3+ years of experience in patent prosecution or 5 years combined engineering and patent experience required.
• Candidate would need to be willing to travel up to 20% of their time to support other locations

Preferred:

• Master's of Science degree in an Electrical Engineering, Mechanical Engineering or medical device design field is preferred.
• Law firm experience preferred.
• Experience in patent prosecution for mechanical and electrical devices preferred.
• Knowledge of energy devices, surgical devices, software or optical technology a plus.
• Engineering industry experience preferred.
• Registered to practice before the U.S. Patent and Trademark Office.

Why join Olympus?
Here, people matter-our health, our happiness, and our lives.

• Competitive salaries, annual bonus and 401(k)* with company match
• Comprehensive Medical, Dental, Visions coverage effective on start date
• 24/7 Employee Assistance Program
• Free virtual live and on-demand wellness classes
• Work-life balance supportive culture with hybrid and remote roles
• 12 Paid Holidays
• Educational Assistance
• Parental Leave and Adoption Assistance
• Volunteering and charitable donation match programs
• Diversity & Inclusion Programs including Colleague Affinity Networks
• On-Site Child Daycare, Café, Fitness Center**

*US Only
**Limited locations
We care about your health and financial well-being and offer the resources you need to feel vital, confident and ready for wherever life takes you. Learn more about our benefit offerings at https://www.olympusamerica.com/careers/benefits-perks.
About us:
Our Medical business uses innovative capabilities in medical technology, therapeutic intervention, and precision manufacturing to help healthcare professionals deliver diagnostic, therapeutic, and minimally invasive procedures to improve clinical outcomes, reduce costs, and enhance the quality of life for patients and their safety.
Headquartered in Tokyo, Japan, Olympus employs more than 31,000 employees worldwide in nearly 40 countries and regions. Olympus Corporation of the Americas, a wholly owned subsidiary of Olympus Corporation, is headquartered in Center Valley, Pennsylvania, USA, and employs more than 5,200 employees throughout locations in North and South America. For more information, visit www.olympusamerica.com.
Olympus is dedicated to building a diverse, inclusive and authentic workplace
We recognize diversity in people, views and lifestyle choices and emphasize the importance of inclusion and mutual respect. We strive to continue to foster empathy and unity in the workplace so that our employees can fully contribute and thrive.
Let's realize your potential, together.
It is the policy of Olympus to extend equal employment and advancement opportunity to all applicants and employees without regard to race, color, national origin (including language use restrictions), citizenship status, religious creed (including dress and grooming practices), age, sex (including pregnancy, childbirth, breastfeeding, medical conditions related to pregnancy, childbirth and/or breastfeeding), gender, gender identity and expression, sexual orientation, marital status, disability (physical or mental) and/or a medical condition, genetic information, ancestry, veteran status or service in the uniformed services, and any other characteristic protected by applicable federal, state or local law.
Posting Notes: || United States (US) || Massachusetts (US-MA) || Westborough ||