Principal Intellectual Property Counsel
ZOLL Medical Corporation
Summary
The Principal Intellectual Property Counsel will join its growing team of in-house IP professionals. This role will be located at ZOLL's headquarters in Chelmsford, and be primarily responsible for preparing and prosecuting patent applications in the United States and overseas for its Cardiac Management Solutions Division, including the ZOLL TherOx subsidiary. The candidate will have leading responsibility for managing a multi-faceted patent portfolio, including managing external counsel, be a key interface with business leaders for strategic IP matters, engineers and technical staff in the identification, collection and review of ideas for patentability. The position will report to ZOLL's Senior Intellectual Property Counsel for the Cardiac Management Solutions Division.
Job description
Job Summary
The Principal Intellectual Property Counsel will join its growing team of in-house IP professionals. This role will be located at ZOLL's headquarters in Chelmsford, and be primarily responsible for preparing and prosecuting patent applications in the United States and overseas for its Cardiac Management Solutions Division, including the ZOLL TherOx subsidiary. The candidate will have leading responsibility for managing a multi-faceted patent portfolio, including managing external counsel, be a key interface with business leaders for strategic IP matters, engineers and technical staff in the identification, collection and review of ideas for patentability. The position will report to ZOLL's Senior Intellectual Property Counsel for the Cardiac Management Solutions Division.
Essential Functions
Strategic patent portfolio management including interfacing with business leaders concerning IP matters, preparation and prosecution of patent applications, managing brainstorming sessions, preparation of new ideas for consideration by ZOLL's IP review committee, product clearance and intellectual property due diligence. Have in-depth technical and patent expertise in areas of strategic importance to ZOLL.
Required/Preferred Education and Experience
- Bachelor's Degree required
- JD required
- 10+ years of relevant experience required
- At least 5-10 years' experience in preparing and prosecuting patent applications with a law firm or corporation
Knowledge, Skills and Abilities
- Must be admitted to at least one state bar
- Must be registered to practice before the U.S. Patent and Trademark Office
- Must have a background in electrical, electronics and/or software engineering. Background in Medical Devices is a plus.
- Must have previous experience in strategic management of patent portfolios
- Prior experience as in-house counsel or maintaining a well-rounded IP practice preferred (e.g., strategic IP counseling and/or supporting IP aspects of corporate matters)
- Must be able to draft patent applications in coordination with inventors
- Ability to understand, analyze, and communicate complex technologies in oral and written form
- Strong interpersonal skills
- Some experience with intellectual property due diligence and product clearance is preferred
- Experience as a Patent Examiner and/or patent searcher is preferred
- Some experience managing a trademark portfolio is preferred
Requirements
- Bachelor's Degree required
- JD required
- 10+ years of relevant experience required
- At least 5-10 years' experience in preparing and prosecuting patent applications with a law firm or corporation
- Must be admitted to at least one state bar
- Must be registered to practice before the U.S. Patent and Trademark Office
- Must have a background in electrical, electronics and/or software engineering
- Must have previous experience in strategic management of patent portfolios
- Must be able to draft patent applications in coordination with inventors
- Ability to understand, analyze, and communicate complex technologies in oral and written form
- Strong interpersonal skills
- Prior experience as in-house counsel or maintaining a well-rounded IP practice preferred
- Background in Medical Devices is a plus
- Some experience with intellectual property due diligence and product clearance is preferred
- Experience as a Patent Examiner and/or patent searcher is preferred
- Some experience managing a trademark portfolio is preferred
Benefits
- Annual Bonus
- Comprehensive Benefits Plans
Company overview
ZOLL Medical Corporation, an Asahi Kasei Group company, is a global leader in acute critical care medical devices and software solutions. Founded in 1980 and named after Dr. Paul Zoll, the pioneering cardiologist known as "The Father of Modern Cardiac Therapy," the company develops innovative technologies that advance emergency care and save lives. ZOLL provides a comprehensive portfolio of medical devices and software solutions including defibrillators and cardiac monitors, CPR feedback systems, therapeutic temperature management devices, ventilation equipment, and sleep apnea diagnostic tools. The company's products are used worldwide by healthcare professionals, EMS and fire personnel, and lay rescuers to treat patients with serious cardiopulmonary and respiratory conditions. ZOLL's flagship products include the LifeVest wearable cardioverter defibrillator, which has protected over one million patients, and the remedē System for treating central sleep apnea. With a focus on improving clinical outcomes and operational efficiencies, ZOLL combines cutting-edge technology with comprehensive training and support services to empower medical professionals and improve patient care across the continuum of emergency response and critical care.