Sr. Intellectual Property Counsel

Job Description:

POSITION SUMMARY:

This position is based on‑site and requires four days per week in the Brea office to support collaboration and business needs.

Reporting to the Envista VP and Assistant General Counsel Intellectual Property, the Sr. Intellectual Property Counsel (IP Counsel) serves as legal advisor to the Envista worldwide portfolio of dental consumable, equipment, and implant companies regarding intellectual property matters, including patents, trademarks, trade secrets, and copyright.

The Sr. IP Counsel will be the dedicated subject matter expert for Envista’s orthodontic products and related software.  The candidate will work closely with our research and development and business development functions on a broad range of strategic and day-to-day activities, including patent prosecution and freedom to operate analyses. In addition to building and supporting the orthodontic division’s IP portfolio,  the Sr. IP Counsel will advise on affirmative steps to protect its IP assets and will manage outside IP counsel and litigation, IPRs and other dispute resolution issues.

The position will be responsible for developing and presenting IP strategies to senior leadership that align with business objectives. With regard to business development, the Sr. IP Counsel is responsible for assessing the IP position of target companies relative to our strategic business development vision.  For those targets that we pursue, the Sr. IP Counsel will direct the evaluation of the target’s IP assets and risks.

This role will require daily interactions with orthodontic division’s research and development teams, the broader Envista legal team, business development, technical/business leaders, and associates at various levels around the world.

ESSENTIAL DUTIES AND RESPONSIBILITIES:

• Draft, review, and supervise the drafting and review by outside counsel and internal staff of patents and patent applications, trademark and service mark applications, contracts, and related documents for the protection of trade secrets and proprietary information, IP assignments, licenses, and royalty agreements, and all other IP transactions

• Identify potential patentable concepts of commercial significance in new products under development

• Conduct and supervise others in conducting FTO analyses for new products in development

• Identify and evaluate IP opportunities and risks associated with potential acquisition targets, including IP ownership issues, transferability of licenses, and FTOs for the target’s product offerings

• Convert IP legal issues and strategy into readily understandable business terms

• Train in IP legal issues and best practices

• Audit activities for compliance with IP Policy

• Develop guidelines and practices to assist in compliance

• Analyze IP laws, regulations, and filing requirements affecting the business

• Oversees patent, trademark, trade secret litigation with emphasis on early identification of strengths, weaknesses, and opportunities for resolution

• Negotiate, supervise, and provides advice regarding the negotiation of settlements involving IP issues or transactions on behalf of the Company

Job Requirements:

EDUCATION AND EXPERIENCE:

• 10+ years of law firm and/or in-house IP practice; providing counsel to global medical device business with exposure to litigation, licensing and M&A is a plus

• Graduation from a top law school with top academic credentials

• Technical degree in Mechanical Engineering or another technical field such as software or similar is a plus

• Registered to practice before the US Patent & Trademark Office

• Major law firm experience is a plus

• Experience with FDA and other notified body regulated devices is a plus

• Experience with counterfeit and grey market goods is a plus

• Must be willing to work in Brea, CA on-site 4 days per week

DESIRED TRAITS AND COMPETENCIES:

• Ability to explain complex legal points to clients with varying degree of knowledge of legal matters

• Ability to take clients’ concerns into account in how best to pursue legal strategies

• Team player who is comfortable as a leader and a doer

• Comfortable providing guidance to senior management with the ability to evaluate and articulate risk

• High integrity and ethics in all dealings – internal, external, and personal

• Non-political in conduct, while understanding internal and