Patent Counsel II

About the Job:

The Patent Counsel II supports legal matters relating to Foundation Medicine's intellectual property portfolio, with a primary focus on next-generation sequencing technologies, molecular diagnostics, bioinformatics, artificial intelligence (AI), machine learning, clinical decision support software, and computational oncology platforms.

This position contributes to the development and execution of FMI's global patent strategy and works closely with Research & Development, Product Development, Biostatistics, Bioinformatics, Medical Affairs, and Business Development teams to identify, protect, and maximize the value of innovative technologies. This position offers the opportunity to build deep patent prosecution experience with mentorship from experienced IP attorneys and exposure to a global life sciences patent portfolio. As part of this experience, you will be exposed to technology that is changing patient’s lives and fulfilling. 

A successful candidate will engage regularly with inventors and business leaders to provide practical, business-oriented counseling on patent, trade secret, publication, and competitive IP matters.

As part of this role, you will be expected to demonstrate subject matter expertise, independent judgment, strong business partnership, strong technical understanding of FMI's products and services, and collaboration across the organization. We are looking for someone who is curious, collaborative, detail-oriented, and excited to work on technology that is advancing patient care.

Key Responsibilities:

• Draft, prosecute, and manage U.S. and foreign patent applications relating to molecular diagnostics, multiomic profiling technologies, bioinformatics, artificial intelligence and machine learning systems, in vitro diagnostic devices, data processing and computational biology, assay-related chemistries, sequencing, biomarkers, and therapeutic methods of treatment
• Partner with scientists, engineers, software developers, data scientists, and business leaders to identify patentable inventions
• Develop prosecution strategies to maximize portfolio value while supporting business objectives
• Coordinate and manage outside counsel globally
• Conduct patentability, freedom-to-operate, invalidity, and non-infringement analyses
• Advise teams regarding publication review, trade secret protection, and invention disclosure practices
• Counsel business and R&D stakeholders regarding patent risks, opportunities, and competitive landscapes
• Support diligence, collaborations, licensing transactions, and strategic partnerships
• Advise on and assess IP risk associated with AI-related technologies
• Build a strong partnership with cross-functional stakeholders
• Deliver practical advice that appropriately balances legal risk and business objectives
• Provide training regarding intellectual property best practices and innovation protection
• Support patent litigation, USPTO proceedings, European oppositions, and licensing disputes as needed
• Assist in competitive intelligence and monitoring of third-party patent activity
• Identify emerging legal or business risks and appropriately escalate issues when necessary
• Develop a strong foundation in patent law and intellectual property strategy relevant to FMI's business
• Demonstrate understanding of biotechnology, diagnostics, software, and AI-related intellectual property issues
• Partner effectively with more senior legal team members when appropriate
• Communicate complex scientific and legal concepts clearly
• Operate with moderate supervision
• Demonstrate increasing ability to prioritize and manage workload independently
• Successfully manage a portfolio of matters with competing priorities
• Deliver high-quality work product within established timelines
• Develop strategic understanding of FMI's products, technologies, and the competitive landscape
• Demonstrate initiative, collaboration, innovation, and commitment to FMI's values
• Act as a trusted representative of the Legal organization
• Comply with FMI's attendance policies

Qualifications:

Basic Qualifications:

• J.D. from an accredited law school
• 3+ years of patent prosecution and portfolio management experience
• Active membership in at least one U.S. state bar
• Registered Patent Attorney admitted before the USPTO

Preferred Qualifications:

• Ph.D. or M.S. in Molecular Biology, Genetics, Genomics, Cell Biology, Bioinformatics, Computational Biology, or a related discipline; M.S. or B.S. in Biomedical Engineering, Computer Science, or Software Engineering; or an equivalent combination of biotechnology and software experience
• Experience drafting and prosecuting patent applications with limited supervision
• Knowledge of domestic and international patent and trade secret laws, regulations, and processes
• Experience with AI/ML systems, bioinformatics pipelines, software platforms, cloud computing, or healthcare software
• Ability to assess the severity and scope of issues and escalate appropriately
• Demonstrated record of collaborative, solution-oriented teamwork
• Strong oral and written communication skills, with the ability to explain complex legal and scientific concepts to audiences with varying levels of familiarity
• Exceptional organization, planning, and attention to detail
• Ability to maintain confidentiality of proprietary and sensitive information
• Understanding of HIPAA and the importance of patient data privacy
• Commitment to reflect FMI’s values: Integrity, Courage, and Passion

The expected salary range for this position based on the primary location of Boston, MA is $156,400 - $195,500 per year. The salary range is commensurate with Foundation Medicines compensation practice and considers factors including, but not limited to, education, training, experience, external market conditions, criticality of role, and internal equity. A discretionary annual bonus may be available based on individual and Company performance. This position also qualifies for Foundation Medicine's benefits.

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