Chief IP Counsel in Sunnyvale, California at Cepheid

Date Posted: 11/9/2018

Job Snapshot

Job Description

Job ID: CEP002374

About Us

At Cepheid, we are passionate about improving healthcare through faster, more accurate diagnostic tests. With our GeneXpert® System, we’ve taken the most sophisticated molecular technology and packaged it into an automated, easy-to-use format that has quickly become the platform of choice worldwide. From the largest laboratories to small physician offices, our game-changing solution delivers critical answers when clinicians and patients need them most. Through strong molecular biology capabilities and ongoing product innovation, we are focused on developing tests for healthcare-associated infections, sexual health, critical infectious disease, virology, and oncology applications. Come join our vision for a better way and help make life better for us all! For more details, visit us at www.cepheid.com or follow us on Twitter (@CepheidNews).


Description

Summary:

Cepheid is searching for a Chief IP Counsel to develop, implement and execute a global intellectual property strategy for its systems, tests and related workflows to support our rapidly expanding global business. 

The Chief IP Counsel will work directly with members of the legal department, business leadership, R&D, and marketing at sites in the U.S., Europe and Asia. The successful candidate will develop a good understanding of Cepheid’s technology and business with the ability to evaluate and balance both legal and business factors when providing advice. This individual will perform a wide variety of hands-on intellectual property work, including white space/competitor analysis, product protection strategy, and acquisition of technology rights. Experience working on global teams is beneficial and the successful candidate will be expected to understand the importance of operating with a global mindset and model global and cultural sensitivity.

Core Responsibilities:

  • Maintain a solid understanding of Cepheid’s businesses, technology and product goals, and challenges in order to establish and implement intellectual property strategies that facilitate those goals and minimize those challenges.
  • Develop and curate a strategic, global, intellectual property portfolio (including patents, copyrights, trademarks and trade secrets).
  • Managing a small team of IP Attorneys and Patent Agents who are responsible for executing on the company’s intellectual property strategy.
  • Perform due diligence and freedom to operate analysis for new technologies and products.
  • Negotiate, draft and review agreements such as licenses, research agreements, collaboration agreements, confidentiality agreements and material transfer agreements.
  • Conduct, advise, and manage activities surrounding adversarial proceedings for third party IP, including IP litigation, European Oppositions and U.S. IPRs, in collaboration with both Danaher counsel and outside counsel.
  • Manage outside counsel and other resource utilization for value and efficiency.
  • Provide legal advice for marketing teams including review of promotional content.
  • Assist with M&A activities as needed, from due diligence to documentation.
  • Deliver training to address knowledge needs in relevant areas of intellectual property law for the applicable employee audience.
  • Build collaborative relationships within the Cepheid’s legal team and Danaher’s legal community.
  • Provide legal advice and counsel to R&D and business personnel on a variety of IP related matters.
  • Willing to work on the smallest and simplest, as well as the most complex, legal matters faced by the company.
  • Occasional domestic and international travel will be required.

Job Requirements



Qualifications

  • Qualifications
    • An advanced degree in a biological science, biochemistry, chemistry, engineering or other field relevant to life sciences or the medical diagnostic industry is strongly preferred.
    • Juris Doctor with excellent academic credentials from an accredited law school.
    • Active bar membership in good standing in at least one US jurisdiction.
    • Admitted to practice before the U.S. Patent and Trademark Office.
    • A minimum of 15 years of intellectual property legal experience in-house at a company or a combination of law firm and in-house experience.

      Interpersonal and Leadership Skills:

    • Approaches IP with a strategic mindset by anticipating future business, competitive and legal risks, and looks for creative solutions and opportunities.
    • Strong communication skills; able to work and communicate effectively with all levels of employees and simply explain complex IP issues in business/non-legal terms.
    • Demonstrated high integrity and ethics in all dealings. Professional maturity and confidence in expressing a point of view with management. Non-political. Independent of perceived popularity of the advice.
    • Strong intellect and a desire to learn.
    • Client-service oriented. High sense of Urgency and self-motivation.
    • Has a track record for delivering results, taking ownership and being accountable.
    • Able to prioritize multiple projects.
    • Strong organizational skills.



Danaher Corporation Overview

Danaher is a global science & technology innovator committed to helping our customers solve complex challenges and improve quality of life worldwide. Our world class brands are leaders in some of the most demanding and attractive industries, including life sciences, medical diagnostics, dental, environmental and applied solutions. Our globally diverse team of 67,000 associates is united by a common culture and operating system, the Danaher Business System, which serves as our competitive advantage. We generated $18.3B in revenue last year. We are ranked #162 on the Fortune 500 and our stock has outperformed the S&P 500 by more than 1,200% over 20 years.
At Danaher, you can build a career in a way no other company can duplicate. Our brands allow us to offer dynamic careers across multiple industries. We’re innovative, fast-paced, results-oriented, and we win. We need talented people to keep winning. Here you’ll learn how DBS is used to shape strategy, focus execution, align our people, and create value for customers and shareholders. Come join our winning team.