Senior Intellectual Property Counsel
Location: Bedford, MA, Remote
Anika Therapeutics is seeking a Senior Intellectual Property Counsel to support its rapidly growing business. Anika develops, produces, markets and sells minimally invasive products that restore active living for people around the world, with a primary focus on osteoarthritis pain management, regenerative solutions, soft tissue repair and bone preserving joint technologies. The ideal candidate will manage all aspects of intellectual property (patents, trademarks, trade secrets, copyrights and associated licensing matters) for a diverse and growing product portfolio. The Senior Intellectual Property Counsel will report directly to the Executive Vice President, General Counsel, and will work closely with the company’s Research and Development, Engineering, Business Development and Sales and Marketing organizations.
To be successful, the individual in this role will need to closely collaborate with various internal business partners to ensure an in-depth understanding of their needs and to foster a trusted partnership around legal matters. The Senior Intellectual Property Counsel must have a well-developed business acumen and the ability to combine her/his business judgement and intellectual property/legal experience to help find innovative solutions to problems, while strengthening strategic partnerships.
Strategic Focus Areas:
- Develop and implement strategies to protect and grow Anika’s global intellectual property assets in line with Anika’s strategic objectives (patents, trademarks, etc.).
- Prepare and prosecute worldwide patent applications and conduct patentability and freedom to operate assessments for discovery, development and commercial related activities, working closely with outside counsel and internal stakeholders.
- Conduct in-depth analyses of competitor products and IP portfolios.
- Conduct due diligence on potential mergers and acquisitions and in-licensing opportunities as well as freedom-to-operate assessments that drive strategic acquisitions and partnerships and product development activities.
Specific Tactical Responsibilities:
- Manage and lead the process for invention disclosures, including collecting and screening disclosures, and conducting inventor interviews.
- Manage domestic and foreign outside counsel to ensure intellectual property filings and projects are completed in a timely, high-quality and economically efficient manner.
- Interact with and provide legal and strategic guidance to senior management, engineers and other R&D team members and functional organizational leadership.
- Collaborate with other legal team members on transactions and other contracts, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters.
- Manage external litigation counsel on IP litigation matters in conjunction with other members of the legal team.
- Review, advise, approve and/or provide strategic advice with respect to marketing and promotional materials.
- Conduct employee training sessions on the protection of innovations through the patent process, on best practices for maintaining confidential business information related to innovation or new product development, on managing contractor and vendor practices and processes related to the same, and on the overall development of the Company’s intellectual property assets.
- Support the Research and Development organization with invention brainstorming events and compile results.
Job Complexity and Requirements:
The Senior Intellectual Property Counsel will work on assignments that are complex in nature, applying legal knowledge and sound business judgment where considerable initiative is required in resolving problems, making recommendations, and preparing deliverables. The Senior Intellectual Property Counsel will work to optimize resource deployment and increase organizational efficiency, while promoting internal collaboration and deliberate action. The Senior Intellectual Property Counsel will need to understand Anika’s larger business initiatives and provide recommendations and deliverables that align with the company’s strategies and goals. Anika maintains offices and conducts product development activities in Massachusetts, Florida and Italy, so occasional domestic or foreign travel will be necessary.
- Bachelor’s Degree and J.D. from an accredited law school required. US bar admission required.
- USPTO registration in good standing.
- 6-8 years of experience drafting and prosecuting patent applications in the area of medical devices/biotechnology, ideally with experience both in a law firm and in-house.
- Freedom-to-operate or product clearance experience, preferably for medical device products.
- Excellent verbal and written communications skills required.
- Strong judgment and ability to assess risk and benefits and convey them in a clear and concise manner both to technical functions as well as to internal business clients/senior management.
- Ability to maintain confidential/legal information.
Desired Experience, Knowledge, and Skills:
- Advanced degree in engineering or science.
- Experience in patent office proceedings such as oppositions, reexaminations, or IPR proceedings.
- Experience in patent/trademark litigation proceedings.
- Experience conducting due diligence.
- Ability to work autonomously in a fast-paced, corporate/in-house work environment while effectively managing competing priorities and remaining a valued and respected member of business teams.
- Desire and natural inclination to work collaboratively as a member of a team and willingness to get involved and learn new skills in order to assume increasing responsibility.
- Ability to be assertive and persuasive with internal and external parties.
- Agility and flexibility to handle multiple tasks in a fast-paced environment.
We are an equal opportunity employer, and we do not tolerate discrimination based on characteristics such as age, gender, gender identity and expression, genetic status, sexual orientation, race, ethnicity, national origin, religion, disability, military status, family status, or any other protected category under federal, state, or local law.