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Intellectual Property Attorney/Agent

  • Second Street, Cambridge, Massachusetts, United States
  • Full Time

About the Job

The Intellectual Property (IP) Counsel/Agent supports legal matters relating to FMI’s intellectual property portfolio. This position manages the implementation of, and contributes to, the prosecution strategy for worldwide patent portfolios. This position is also responsible for identifying patentable inventions through frequent interactions with the Research and Development (R&D) Team. This position engages with and advises a variety of individuals throughout the company, including scientific leaders responsible for developing FMI’s new products and the business leaders commercializing these technologies.

Key Responsibilities

• Prosecute US and foreign applications related to complex algorithms and bioinformatic data.

• Identify patentable inventions through frequent interactions with the R&D team.

• Conduct patentability and freedom-to-operate analyses, and render opinions on validity, non-infringement and patent avoidance of third-party patents.

• Review technical and scientific manuscripts, posters, and other materials intended for publication for potential impact on the patent portfolio.

• Educate and advise the business on IP issues and good practices.

• Counsel internal partners on IP-related aspects of business and transactions.

• Support patent litigations and post issuance proceedings such as post grant proceedings and oppositions.

• Travel for work on intellectual property matters up to 10% as needed.

• Facilitate the drafting of new patent applications and responses to office actions.

• Assist in licensing negotiations as they arise.

• Identify legal issues as they arise and escalate as needed.

• Other duties pertinent to IP matters as assigned.

Qualifications

Basic Qualifications

• Registered US Patent Attorney/Agent in good standing with the U.S. Patent and Trademark Office

• 3+ years of experience in patent prosecution

Preferred Qualifications

• BS or higher in computer engineering, computer science, bioinformatics, or mechanical/electrical engineering with software experience

• 3+ years of experience independently preparing and prosecuting patent applications

• Experience:

  • prosecuting active and complex patent portfolios around complex algorithmic software
  • handling post grant proceedings and oppositions
  • identifying severity and areas for issues and escalating at applicable times

• History of collaborative, solution-oriented teamwork

• Knowledge of domestic and international laws, regulations, and processes for patents and trade-secrets

• Strong oral and written communication skills with demonstrated ability to simplify complex legal and scientific concepts for audiences with varying levels of fluency in those areas

• Exceptional skills in the areas of organization, planning, and attention to details

• Agreement to maintain confidentiality as it pertains to proprietary and/or sensitive information

• Understanding of HIPAA and importance of patient data privacy

• Commitment to reflect FMI's values: passion, patients, innovation, and collaboration

 

About Foundation Medicine

Foundation Medicine, Inc. (FMI) began with an idea—to simplify the complex nature of cancer genomics, bringing cutting-edge science and technology to everyday cancer care. Our approach generates insights that help doctors match patients to more treatment options and helps accelerate the development of new therapies. Foundation Medicine is the culmination of talented people coming together to realize an important vision, and the work we do every day impacts real lives.

Confidence, or the belief that we need to check every box before applying for a job, can sometimes hold us back from going after a role that inspires us. At Foundation Medicine there's no such thing as the 'perfect' applicant, and our company is a place where every employee can make an impact and continue to grow whatever background they may have or path they may have taken. So, as long as you meet the basic qualifications for a role, please apply if you see a position that would make you excited to come into Foundation Medicine every day and help us transform cancer care.

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Internal applicants, please use your FMI email address.

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Foundation Medicine is proud to be an Equal Opportunity and Affirmative Action employer and considers all qualified applicants for employment without regard to race, color, religion, sex, gender, sexual orientation, gender identity, ancestry, age, or national origin. Further, qualified applicants will not be discriminated against on the basis of disability or protected veteran status. We also consider qualified applicants regardless of criminal histories, consistent with legal requirements. See also FMI’s EEO Statement and EEO is the Law and Supplement. If you have a disability or special need that requires accommodation, please let us know by completing this form.  (EOE/AAP Employer)

To all recruitment agencies: Foundation Medicine does not accept agency resumes. Please do not forward resumes to our jobs alias, Foundation Medicine employees or any other organization location. Foundation Medicine is not responsible for any fees related to unsolicited resumes.