Patent Counsel

Olympus Corporation of the Americas • Full-time • Center Valley, PA, US • $131.70k - $184.38k / year • 11m ago

Working Location: NATIONWIDE

Workplace Flexibility: Field

For more than 100 years, Olympus has focused on making people's lives healthier, safer and more fulfilling.

Every day, we live by our philosophy, True to Life, by advancing medical technologies and elevating the standard of patient care so people everywhere can fulfill their desires, dreams, and lives.

Our five Core Values empower us to achieve Our Purpose:

Patient Focus, Integrity, Innovation, Impact and Empathy.

Learn more about Life at Olympus.

Job Description

This position is responsible for all aspects of U.S. and foreign patent prosecution for Olympus entities in the Digital Unit and Advanced Endoluminal Intervention (Smart Connected Care) medical/technology fields including responding to Office Actions from the United States Patent and Trademark Office in coordination with outside patent counsel, and coordinating responses to Office Actions from other patent offices around the world. This role will be the primary interface with engineers and technical staff regarding new patent filings and will conduct competitive landscape searches and review prior art with R&D staff at regular meetings. The Patent Counsel role will be responsible for the prosecution process from invention disclosure to the issued patent including: manage IP docketing and database in coordination with support staff; conduct patent clearance studies and patentability searches; assist with training programs for engineers on topics such as patent searching; and coordinate with Global IP team members on patent application, freedom-to-operate, and other intellectual property issues that impact global business objectives.

This position will assist in developing and executing global portfolio management strategy and is responsible for other litigation, licensing, acquisition, or partnership due diligence as necessary. The Patent Counsel will handle intellectual property matters arising from the daily business operations of Olympus' Smart Connected Care technology groups, including negotiating and drafting contracts on a variety of intellectual property matters. This role will also provide professional counsel and service to companies of the Olympus Group in intellectual property matters.

Job Duties

Manage all aspects of US prosecution.
Manage intake of patent clearance study requests and conduct freedom-to-operate searches and intake of invention disclosures and review disclosures for patentability
Coordinate prosecution matters with outside counsel.
Instruct foreign patent associates on foreign filings and office actions.
Conduct infringement and invalidity studies in support of litigation.
Manage docket and database management. Train engineers on patent issues.
Participate in M&A team for due diligence and freedom to operate for acquisitions or licenses.
Create patent landscapes and design guidance documents.
Draft and negotiate various intellectual property related agreements, including licenses and transactional documents.
Prepare and revise patent clearance studies. Counsel on patent infringement and patent clearance opinions.
Assist in the management of the Olympus's worldwide intellectual property portfolio.
Works with research and development and marketing personnel, as well as patent agents and senior management, to define and implement intellectual property strategy. Performs other related duties as directed.

Job Qualifications

Required:

Juris doctor degree from an accredited law school. Member of at least one State bar.
Bachelors of Science required and preferably Master's of Science degree in an Electrical Engineering, Computer Science/Engineering, or medical device related field. Registered to practice before the U.S. Patent and Trademark Office.
Minimum 3+ years of experience in patent prosecution or 5 years combined engineering and patent experience.
Law firm experience preferred.
Experience in patent prosecution for digital, artificial intelligence, robotic, and other electrical devices required.
Knowledge of medical devices a plus.
Engineering industry experience preferred.

Preferred:

Must be able to communicate effectively (verbal and written) and be proficient in Microsoft Office (Word, Excel or Access, PowerPoint).
Ability to work in small team environment, but also self starter with ability to work independently.
Must be able to meet deadlines and be detailed oriented.
Good planning and organization skills a must.
Strong critical thinking and problem solving skills.
High energy, self motivated, hands on and participatory with strong results orientation and ability to quickly establish priorities.
Must have a sense of ownership and a desire to support the organization to achieve high level corporate goals.
Strong relationship skills.
High level of motivation, commitment and dedication combined with a proactive mindset.

Other considerations:

Candidate would need to be willing to travel up to 20% of their time to support other locations.

Why join Olympus?

We offer a holistic employee experience supporting personal and professional well-being through meaningful work, equitable offerings, and a connected culture.

Equitable Offerings you can count on:

Competitive salaries, annual bonus and 401(k)* with company match
Comprehensive medical, dental, vision coverage effective on start date
24/7 Employee Assistance Program
Free live and on-demand Wellbeing Programs
Generous Paid Vacation and Sick Time
Paid Parental Leave and Adoption Assistance*
12 Paid Holidays
On-Site Child Daycare, Café, Fitness Center**

Connected Culture you can embrace:

Work-life integrated culture that supports an employee centric mindset
Offers onsite, hybrid and field work environments
Paid volunteering and charitable donation/match programs
Employee Resource Groups
Dedicated Training Resources and Learning & Development Programs
Paid Educational Assistance

*US Only

**Center Valley, PA and Westborough, MA

Are you ready to be a part of our team?

Learn more about our benefit and incentives.

The anticipated base pay range for this full-time position working at this location is $131,702.00 - $184,384.00 / year, plus potential for annual bonus (subject to plan eligibility and other requirements). Olympus considers a variety of factors when determining actual compensation for this position including: level of experience, working location, and relevant education and certifications.

At Olympus, we are committed to Our Purpose of making people's lives healthier, safer and more fulfilling. As a global medical technology company, we partner with healthcare professionals to provide best-in-class solutions and services for early detection, diagnosis and minimally invasive treatment, aiming to improve patient outcomes by elevating the standard of care in targeted disease states.

For more than 100 years, Olympus has pursued a goal of contributing to society by producing products designed with the purpose of delivering optimal outcomes for its customers around the world.

Headquartered in Tokyo, Japan, Olympus employs more than 31,000 employees worldwide in nearly 40 countries and regions. Olympus Corporation of the Americas, a wholly owned subsidiary of Olympus Corporation, is headquartered in Center Valley, Pennsylvania, USA, and employs more than 5,200 employees throughout locations in North and South America. For more information, visit www.olympusamerica.com.

You Belong at Olympus

We value a workforce that reflects a wide range of perspectives, backgrounds, and experiences. We foster an environment where all employees feel valued, respected, and supported. And we provide employees with equal access to opportunities for growth and development.

Applicants Requesting Accommodations: Olympus is committed to the full inclusion of all qualified individuals. As part of this commitment, Olympus will ensure that persons with disabilities are provided reasonable accommodations for the hiring process. If reasonable accommodation is needed, please contact OCAAccommodations@olympus.com. If your disability impairs your ability to email, you may call our HR Compliance Manager at 1-888-Olympus (1-888-659-6787).

Let's realize your potential, together.

It is the policy of Olympus to extend equal employment and advancement opportunity to all applicants and employees without regard to race, color, national origin (including language use restrictions), citizenship status, religious creed (including dress and grooming practices), age, sex (including pregnancy, childbirth, breastfeeding, medical conditions related to pregnancy, childbirth and/or breastfeeding), gender, gender identity and expression, sexual orientation, marital status, disability (physical or mental) and/or a medical condition, genetic information, ancestry, veteran status or service in the uniformed services, and any other characteristic protected by applicable federal, state or local law.

Posting Notes: || United States (US) || Pennsylvania (US-PA) || Center Valley || Legal