Description:
Summary:To foster growth and innovation at Dexcom, this individual will support all aspects of Intellectual Property (IP) detailed below including IP procurement, enforcement and competitive analysis. This individual will work with and advise internal clients at all levels of R&D and business leadership on various IP matters.
As a key team member, this individual must be a highly motivated self-starter, who is comfortable collaborating as part of a team, communicating directly with senior leaders, and working independently. This person will report to a Sr. Director, IP Legal Counsel.
The Sr Lead IP Legal Counsel will be responsible for leading the strategic management of intellectual property matters for the company including management of the global IP portfolio, overseeing landscape and freedom to operate analyses, supporting global IP litigation activities, advising client groups on IP matters, and evaluating external IP opportunities including due diligence for major acquisitions.
Essential Duties and Responsibilities:
- Advising technical and business stakeholders on IP matters
- Setting and implementing a patent strategy for Dexcom's innovations
- Managing prosecution efforts in various areas including wireless device to device communications, cybersecurity, UI and software services, electrical and electronics, including directing outside counsel both domestically and globally
- Interacting with patent offices throughout the world in order to strengthen and accelerate the issuance of Dexcom's patented innovations
- Supporting IP litigation, licensing and commercialization activities
- Developing, coordinating and reviewing IP search and analysis projects, including patentability, validity, landscape, freedom to operate and product clearance analysis
- Supporting competitive intelligence and monitoring activities
- Coordinating and managing patent committees
- Providing internal education and trainings related to all aspects of IP including trademark, copyright and patent
- Providing other IP support as needed
Required Qualifications:
- Typically requires a Bachelor's degree and a minimum of 10+ years of related experience including at least 5 years of patent prosecution experience in the field of software, wireless communications and/or electrical and electronics (EE).
- J.D. from an accredited law school.
- Bachelor's degree in the field of computer science or engineering, electrical engineering or other engineering discipline combined with experience in the fields of software or electrical engineering
- Strong experience in the field of software and EE IP prosecution, due diligence, infringement and validity analysis, and/or litigation
- Admitted to a US state bar and USPTO registration in good standing.
Preferred Qualifications:
- Strong education or industry experience in one or more of the following fields of medical device, algorithms, software design and development, wireless communications and EE.
- Experience working at a top law firm and/or as in-house counsel
- Experience prosecuting software and EE patents, include addressing 101 rejections
- Advanced technical degree (Masters or Doctorate) in the above disciplines is preferred.
Functional Description
Develops and maintains company intellectual property protections and processes, including patent applications, trade secrets, trademarks, copyrights, licensing and research agreements, publications and intellectual property aspects of contracts and agreements. Prepares legal opinions and analyses of patents. Reviews and drafts significant corporate legal documents. Evaluates the validity of competitors' patents and potential company product infringement upon valid patents of competitors. Responsible for pre-patent filing review, providing legal advice to the company concerning the patent viability of its inventions and the advisability of filing patent applications covering the company's inventions. Provides other general legal advice and represents the company in matters relating to intellectual property law. Requires a law degree.
Functional/Business Knowledge
- Provides expertise and advice to guide the activities of a project. Generally has an advanced level of expertise and is capable of working on any project that would typically arise in the function. Viewed as expert in the field within the Major Function.
- Provides insight in the development of functional objectives utilizing broad expertise and knowledge.
Scope:
- Works independently on significant and unique issues where analysis of situations or data requires an evaluation of intangibles.
- May develop new approaches and applications of programs or systems to lead processes in new direction.
- Exercises independent judgment in methods, techniques and evaluation criteria for obtaining results.
- Demonstrates independent decision making and use of good judgment.
- Acts independently to determine methods and procedures on new or special assignments.
- May oversee the activities of others.
Management:
- N/A
- N/A
Experience and Education:
- Typically requires a Bachelors degree and a minimum of 13+ years of related experience.
- At this level a graduate degree may be expected with 6 years of related experience.
- The Workplace Type for this role is Flex. Based on the nature of your position you will be working onsite approximately 2-3 days per week from collaborative space and hoteling desks at our Dexcom sites. You will need to be located within commuting distance (typically 75 miles/120km) of your assigned Dexcom site.
