Description:

The Position:
​Responsibilities:
  • Provides clear, informed and sophisticated counseling to stakeholders engaged in research & development, manufacturing, business development/partnering, portfolio and lifecycle management and commercialization activities;
  • Renders legal opinions with respect to patentability, validity, and freedom to operate;
  • Supervises a substantial patent portfolio;
  • Manages patent portfolios in strategic alignment with business needs and priorities, including preparation, prosecution, maintenance and/or defense of US and foreign patent filings and patent office administrative actions (e.g. inter partes reviews, interferences, reexaminations, post grant reviews, and oppositions);
  • Applies knowledge of patent trends and case law developments to devise patent strategies and advice;
  • Conducts due diligence assessments and counseling based on these assessments, including freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation;
  • Manages external relationships with outside counsel and collaborators, including substantial interactions within a multicultural global patent function;
  • Supports intellectual property-related transactional projects (including MTAs, CDAs, research collaborations, and licensing agreements) and litigation activities;
  • Accountable for delivering on-time, on-target and within-budget team goals and results; and,
  • Serves as a trusted advisor and partner to the business in navigating an evolving business and legal landscape.
  • Location in or willingness to relocate to Tucson, AZ to be available to work onsite is preferred.

Position Competencies:
  • Strategic Patent Expert. Must be able to draft patent applications in the fields of diagnostic workflows, laboratory IT systems, diagnostic instrumentation and related reagent and consumable systems.
  • Subject matter flexibility and curiosity. Technical knowledge across a number of technology areas and willingness/ability to engage with other patent attorneys in medical/biological/chemical technology areas including immunohistochemistry (IHC), in situ hybridization (ISH), and digital pathology.
  • Influential Communicator and Collaborative Relationship Builder

Minimum Qualifications:
  • 7+ years of experience in patent prosecution and counseling in a corporate setting and/or law firm.
  • Experience in patenting in vitro diagnostic devices preferred.
  • Admission to practice before the U.S. Patent and Trademark Office;
  • A bachelor's degree in Chemical Engineering, Biomedical Engineering, or similar fields and/or experience is required; Advanced Degree preferred;
  • Law degree (JD) is required. Licensed to practice law in one or more of the 50 states or the District of Columbia;
  • Agreement and transactional experience is desired, but not required.
  • Important Stakeholders/ Interactions include: Head of Intellectual property, Pathology Customer Area (PCA); Head of PCA and Senior Leadership Team; Research and Development Leaders across Roche Diagnostics Solutions and Roche Information Solution; Patent and Trademark Office