Werfen North America · 19 hours ago
Intellectual Property Counsel or Agent
Werfen North America is a growing, family-owned company and a worldwide leader in specialized diagnostics. The Intellectual Property Counsel is responsible for providing high quality IP service to the organization, managing patent portfolios, and supporting internal clients while collaborating closely with the Chief IP Counsel.
Health CareManufacturing
Responsibilities
Initiate, improve, and implement IP strategies and processes across Werfen technology centers to optimize IP asset procurement
Identify strengths and weaknesses and set priority to selected technical areas for IP procurement
Update databases and provide IP statistics information to business
Continue to learn the ever changing IP laws and practices in major jurisdictions and apply such knowledge effectively in daily work
Perform freedom-to-operate studies and provide high quality work products to business
Effectively, efficiently, and independently manage outside counsel to ensure high quality prosecution work product within a reasonable budget
Perform trade secret survey and strategize and implement trade secret policies adapted to local laws within Werfen entities
Assist with trademark portfolio management
Assist with IP related agreements
Support software licensing matters and other day-to-day IP related matters, including responding to client inquiries or perform other assigned tasks as they arise
Support IP due diligence
Performs other duties and responsibilities as assigned
Qualification
Required
Bachelors degree in science or engineering, preferably in biological sciences, required
JD from an accredited U.A. law school and membership in good standing of state bar required
Admission to practice before the U.S. Patent & Trademark Office required
Minimum of 5 years of relevant experience gained in a law firm required. In-house experience is a plus but is not required
Solidly trained in patent drafting and prosecution, and currently able to independently draft and prosecute without senior attorney's supervision
Well-versed in patent law in major jurisdictions in software, hardware, and diagnostic assays
Substantial freedom-to-operate (FTO) experiences, including searches, evaluations, and work product generation
Proven ability to establish a high degree of credibility, respect and trust at all levels including with technologists, scientists, managers and executives
Strong professional and personal communication skills, capable of dealing with a wide range of people
Be accountable for the responsibilities taken or work assigned
Effective planning and organizing skills to prioritize key areas of responsibility, tasks and projects. Ability to prioritize and manage multiple projects
Strong team player who is both committed and flexible
Combination of in-depth legal knowledge and commercial awareness of the business issues facing the organization and the ability to deal with problems in a practical manner
The successful candidate must also exhibit the highest integrity, excellent judgment, and the ability to proactively recognize and effectively communicate legal issues to patent, legal, and senior management
Be energized by challenging and interesting legal work, technical and scientific matters, and novel business problems
Be keenly interested in and curious about technology and eager to work closely with technology development professionals
Be able to work cross-functionally to develop knowledge to enhance support of business needs
Have excellent drafting and very clear communication skills
Must be able to multitask and prioritize in a dynamic work environment
Must be able to independently lead projects and complete tasks timely with high quality work products and with minimum supervision
Must be professional, thoughtful, respectful, flexible, responsive, and accountable
Must be willing to work on not only high-risk matters but also daily matters including looking up patent status or generating statistics or responding to client inquiries on various matters
Must be willing to adapt to the Werfen business environment, learn about business perspectives, and practice within
Must be able to think strategically but also work on details meticulously
Must be able to initiate projects as needed and follow through implementation
Must be able to handle matters in a wide range of technology fields, curious, and willing to take on new tasks and continuously learn
Must stay up to date with evolving IP laws in major jurisdictions
Preferred
Preferred training or experience relevant to life sciences, chemical analysis, or materials characterization and strong technological aptitude and inclination to learn and work with a range of technologies
Benefits
Medical, dental, and vision insurance
401k plan retirement benefits with an employer match
Paid vacation
Paid sick leave
Participation in a commission plan
Performance-based bonus
Company
Werfen North America
Werfen is a growing, family-owned, innovative company founded in 1966 in Barcelona, Spain.
H1B Sponsorship
Werfen North America has a track record of offering H1B sponsorships. Please note that this does not
guarantee sponsorship for this specific role. Below presents additional info for your
reference. (Data Powered by US Department of Labor)
Distribution of Different Job Fields Receiving Sponsorship
Represents job field similar to this job
Trends of Total Sponsorships
2025 (10)
2024 (12)
2023 (10)
2022 (2)
2021 (11)
2020 (8)
Funding
Current Stage
Late StageRecent News
2025-07-19
2025-05-17
2025-04-04
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