The Intellectual Property Counsel will provide leadership and advice as a key resource both to the legal department and to the full enterprise for Intellectual Property (IP) issues. The IP Counsel identifies, plans, develops, and manages the prosecution, litigation, freedom-to-operate activities, and other transactional agreements and documents related to Intellectual Property developed in the Health System and at Feinstein Research Institutes.
Provides general counsel and advice regarding legal aspects of the Intellectual Property activities, contracts, policies, procedures, plans and objectives of the Health System. Consults with administrative and other personnel of the Health System regarding their legal obligations and duties; as well as with outside legal counsel, and other consultants, on IP legal matters affecting System affiliated entities and personnel.
- Advises management and other in-house clients on intellectual property issues
- Leads the development and implementation of IP strategies for the assigned divisions
- Drafts, reviews and negotiates intellectual property-related agreements and terms and conditions, including technology and software licenses
- Advises on intellectual property matters for mergers and acquisitions
- Manages and supports intellectual property related litigation matters
- Liaises with outside counsel on patent and trademark matters, intellectual property transactional matters, and litigation
- Manages the overall product release clearance/freedom to operation as it pertains to patents and intellectual property, including preparing clearance/freedom to operate opinions
- Review and evaluate patent infringement risks.
- Determine the need for and supervise patent and trademark infringement and patent validity studies
- Advise M&A teams about intellectual property issues and risks, review M&A target company issues as appropriate,
- Experience in the preparation, prosecution and portfolio management of patents, trademarks and copyrights
- Knowledge of post-grant and other administrative proceedings before the US Patent and Trademark Office
- Experience with drafting and negotiating license agreements, technology transfer and other transactions and addressing IP issues in corporate transactions
- Advise on Intellectual Property portfolio management, IP dispute resolution, marketing and advertising claims, copyright protection and trade secrets
- Experience with patentability, invalidity and freedom to operate analysis and opinions
- Addressing and managing the IP needs of the health system and the research institute including drafting, negotiating, interpreting, and advising on IP related agreements, as well as drafting and negotiating IP provisions in commercial agreements such as licenses, manufacturing agreements, revenue share agreements, and supply agreements
- Identifying and navigating patent and trademark opportunities and risks for business, programs and operations of Northwell Health
- Strategic contributor to IP due diligence, technology assessments, and FTO analyses in potential strategic transactions (including M&A, licensing, and financing), as well as utilization of outside counsel in the same
- Assist with policy and contractual responses to a variety of issues relating to IP and confidentiality
- Assists the Office of Intellectual Asset Management and the Feinstein Institutes on matters concerning licensing and commercialization of Health System technologies.
- Attend committee and board meetings as requested and appropriate, assists committee and board members with activities requiring their consultation or approval
- Provide advice regarding the structure of affiliation arrangements within the Health System in order to best protect the interests of the System and its constituent hospitals and corporations, as well as the appropriate means to document such arrangements.
Performs related duties, as required.
*ADA Essential Functions
degree from an accredited Law school with excellent academic credentials
to New York State Bar and in good standing
eight (8) years previous experience in patent prosecution and other
transactional intellectual property work, with law firm experience or a
combination of law firm and in-house
to practice before the U.S. Patent and Trademark Office, preferred
with oversight and prosecution of an IP Portfolio
degree in an science or technology, preferred
skills in verbal and written communication, with ability to distill complex
legal issues to essential elements for clients throughout the organization with
different abilities and responsibilities
organizational skills in order to prioritize and manage multiple time-sensitive
projects simultaneously in a fast-paced environment
teamwork, collaboration, and communication abilities
to assume and manage a heavy workload to meet timing and project needs