SHINE Medical Technologies, LLC is immediately seeking a Corporate Counsel, Intellectual Property to join SHINE’s Legal Team. In this important role, you will work closely with various Departments in order to manage SHINE’s intellectual property portfolio and to support the IP needs of SHINE’s Engineering, Sales, Business Development and Marketing Teams. This will include creation and enforcement of patents, trade secrets, trademarks, copyrights and license agreements, in the U.S. and abroad. The successful candidate will be collegial, collaborative, hardworking, highly organized, and able to thrive in a fast-moving, complex environment. SHINE has a positive and supportive culture – we look for people who are curious, inventive, and who work to be a little better every single day.
This position reports directly to the General Counsel & Corporate Secretary and is based at SHINE’s corporate headquarters in Janesville, Wisconsin, but may start remotely in accordance with SHINE’s return to work policy.
Duties and Responsibilities
- Conduct patentability, patent landscape, patent clearance, and patent non-infringement/validity searches and analyses, draft opinions and develop processes related to the same;
- Conduct trademark clearance and trademark non-infringement searches and analyses, draft opinions and develop processes related to the same;
- Collaborate with business teams to identify and protect new inventions through ideation sessions and the development of associated processes;
- Draft and prosecute U.S. and international patent and trademark applications to obtain strategic patent and trademark protection;
- Develop, implement and maintain a trade secret compliance, identification and protection program for the Company;
- Manage and maintain SHINE’s intellectual property portfolio, including developing and implementing intellectual property life-cycle management strategies and instituting intellectual property review committees;
- Monitor competitive intellectual property on an ongoing basis;
- Draft, revise and negotiate IP License Agreements, Joint Development Agreements, Collaboration Agreements, University Research and Development Agreements, Non-Disclosure Agreements, and other IP-related Agreements;
- Perform IP due diligence analysis of opportunities and organize IP due diligence as requested by third parties;
- Analyze offensive and defensive infringement positions, send and respond to patent notice letters, and support IP litigation;
- Develop and deliver employee trainings on IP-related matters; and
- Provide general intellectual property counseling.
Requirements
- J.D. from a top law school;
- Must be admitted, active, and in good standing with the State Bar of Wisconsin (or with another state bar and registered, or eligible to register, as in-house counsel with the State Bar of Wisconsin);
- Bachelor’s or advanced degree in physics, nuclear engineering and/or chemical engineering;
- Registered patent attorney admitted to practice before the USPTO;
- A minimum of 3 years of relevant intellectual property law experience;
- Experience implementing and monitoring intellectual property strategies to support technology or product development and deployment;
- Experience drafting and negotiating IP-related agreements having various levels of complexity;
- Experience in preparation and prosecution of U.S. and non-U.S. patent and trademark applications;
- Experience evaluating and advising on infringement risks and drafting legal opinions;
- Experience evaluating potential enforcement claims and disputed matters and advising on same;
- Excellent oral and written communication skills and interpersonal skills;
- Demonstrated ability to work efficiently, prioritize workflow, meet demanding deadlines, and manage multi-dimensional projects in a fast-paced environment with a passion for results;
- Sound and practical business judgment;
- Ability to work both independently and cross-functionally with various teams across the organization in a team environment, including Engineering, Sales, Business Development and Marketing;
- Eagerness for learning new areas of law and expanding legal and business skill sets; and,
- Passionate about technology and energized by the challenges of serving a dynamic, hyper-growth company.
Qualified candidates should submit their contact information, cover letter, and resumé via the Careers/Current Openings section of our website at: www.shinemed.com.
Eligibility for employment is conditioned on the applicant’s ability to qualify for access to information subject to U.S. Export Controls. Additionally, applicant’s eligibility may be conditioned based upon meeting the Nuclear Regulatory Commission requirements for access to Safeguards Information, which typically requires a pre-employment drug screen, fingerprinting and criminal background check.
SHINE values diversity in all its forms as a critical component of innovation, which is fundamental to our success. Every member of the SHINE community benefits from the talents and experiences of our peers, from the mutual respect we exercise, and from the responsibility we take for our actions.
