Director, Intellectual Property

Company: KARL STORZ Imaging, Inc. (KSI)

Job Code: 13564

Pay Grade: TBD

Salary Range: $142,600 - $239,600

Description

KARL STORZ SE & Co. KG based in Tuttlingen, Germany, is a family-owned, global company committed to benefiting humanity by advancing medical technology through innovation and education.

For more than 75 years, KARL STORZ has been dedicated to earning its international reputation as a leader that designs, engineers, manufactures, and markets all its products with an emphasis on visionary design, precision craftsmanship, and clinical effectiveness.

KARL STORZ is currently looking for a Director of Intellectual Property. This is a strategic leadership role and will be responsible for establishing the IP strategy for the Americas. This person will support KARL STORZ's IP innovation, patent drafting, and prosecution, and support KARL STORZ's growing business and intellectual property assets, including collaborating with the US legal function on US IP litigation. The Director of IP will be responsible for managing the KARL STORZ North America IP staff.

Responsibilities

• Prepare, file, and prosecute the issuance of provisional and non-provisional patent applications.
• Draft and review business contracts, including distribution, supply, and manufacturing agreements, purchase agreements, licenses, and non-disclosure agreements.
• Prepare intellectual property-related legal opinions on issues such as freedom to operate, ownership, infringement, and validity.
• Perform patent-related due diligence in commercial transactions such as mergers, acquisitions, divestitures, and licensing.
• Communicate effectively with business areas, such as R&D, marketing, and sales on patent and trademark matters.
• Provide legal representation in cases of patent infringement and related litigation matters
• Conduct searches of prior art to evaluate whether an invention has been previously represented in the public domain and is patentable.
• Review and draft contracts for the company (both general business-related and intellectual property related) as assigned.
• Keep fully informed of all new and/or evolving developments in patent and trademark law and keep executive management informed of applicable new laws, their impact on the organization, and the progress and results of court cases and/or legal opinions.
• Develops department goals and objectives and is responsible for the implementation of a patent information filing system to ensure achievement of the Global IP through the region IP team.
• Develops operational policies and procedures for tracking, maintaining, and updating legal documentation and records.
• Evaluate current IP policies, procedures, and practices for accomplishing departmental objectives and develop and implement improved procedures and practices.
• Selects, develops, and evaluates personnel to ensure the efficient operation of the department.
• Initiate personnel actions, including employee hires, promotions, transfers, corrective disciplinary actions, and discharges.
• Partner with site HR on policies, employee relations, and succession planning, ensuring compliance with employment laws affecting the US IP personnel.
• Develop and operate to the annual budget. Analyze and monitor department costs.
• Regular attendance is an essential job function
• Will spend part of his/her time as a member of continuous improvement teams undertaking projects and seeking ways to improve the quality of KSI's products and services.
• Investigate and analyze competing products for possible infringement of KS patients, reporting findings to Executive Management.
• Manage the coordination of relevant cross-company IP issues, providing appropriate feedback and recommendations to Executive Management.
• Monitor and analyze competitive patents, reporting and making recommendations to Senior KS Executive Management and KST Patent Management, as appropriate.
• Train and support key KS employees at various responsibility levels on patent search skills and techniques, and related patent claims interpretation, in and related to their particular specialty.
• Performs other related duties as assigned by supervisor.

Requirements

• J.D., Bar admission required
• Admission to US Patent & Trademark Office as a Patent Attorney required
• BA/BS degree (or equivalent training and experience) in scientific or engineering disciplines, preferably related to imaging systems, machine learning and image recognition, and/or graphics/video processing
• Minimum of 10 years of patent-related legal expertise, including patent preparation and prosecution, patent office proceedings, and intellectual property due diligence, as well as additional soft IP areas (trademarks, copyrights, and the like)
• Prior experience as a people leader; strong leadership and management skills to develop and build a team
• Knowledge of state and federal laws governing intellectual property and patents.
• Knowledge of patent-related case law from the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and U.S. District Courts, and experience in analyzing the patentability of inventions and the validity of patents, and drafting related opinions and or other legal documents.
• Ability to read, analyze, and interpret the most complex documents. Ability to conduct complex and extensive research, write reports, legal briefs, and business and legal correspondence.
• Ability to use patent and trademark tracking software in order to follow deadlines.
• Knowledge of medical device quality system regulations and standards (i.e., U.S. FDA Quality System Regulation 21CFR Part 820, ISO13485, ISO9001)
• Ability to travel to various sites throughout the Americas and have a regular presence in the U.S. sites

Preferences

• In-house experience in the medical, health care, life sciences, and biotech industry
• Experience with endoscopy/visualization technology
• Experience reviewing and drafting contracts
• German language is a plus

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Pay Transparency

The salary range and/or hourly pay rate listed is a good faith determination of potential base compensation that may be offered to a successful applicant for this position at the time of this job posting and may be modified in the future. When determining a specific team member's base salary and/or hourly pay rate, several factors will be considered including such things as location, specialty, service line, years of relevant experience, education, professional credentials, internal equity, and the amount budgeted for the role.

Vaccine requirements at KARL STORZ due to COVID-19
KARL STORZ is committed to maintaining a safe work environment for our employees and therefore we require the COVID-19 vaccine for all of our employees unless otherwise due to an underlying medical condition or sincerely held religious beliefs. During the interview process, we encourage you to ask how COVID-19 may impact the role you are seeking and if you require a reasonable accommodation regarding the vaccine requirement see below for the process for requesting accommodation. Please to learn more about our overall response to COVID-19.

Employee Benefits Program Overview for U.S. Locations

• Medical / Dental / Vision including a state-of-the-art wellness program and pet insurance, too!*
• 3 weeks vacation, 10 holidays plus paid sick time*
• Up to 8 weeks of 100% paid company parental leave**
  
• 401K retirement savings plan providing a match of 60% of the employee's first 6% contribution
• Section 125 Flexible Spending Accounts
• Life, STD, LTD & LTC Insurance
• We prepay your tuition up to $5,200 per year! - Tuition preimbursement
  
• Fitness reimbursement of up to $200 annually
• Employee referral program of up to $2,000 per hire
• And much more!

*Field sales, internships, and part-time employees are not eligible except where required by state law.
Non-employees, including temporary workers and consultants, are not eligible to participate in the KARL STORZ benefits program.

**To include, maternal/paternal leave, adoption, and fostering of a child.

KARL STORZ reserves the right to change or modify the employee's job description whether orally or in writing, at any time during the employment relationship. Additionally, KARL STORZ, through its supervisors, may require an employee to perform duties outside their normal description within the sole discretion of the supervisor. Employee must comply will all applicable KARL STORZ policies and procedures.

Equal Employment Opportunity & Reasonable Accommodation Statement
KARL STORZ is committed to creating an inclusive space where employees are valued for their skills and unique experiences. To achieve this goal, we are committed to diverse voices, and all applicants will receive consideration without regard to race, color, sex, national origin, disability, veteran status or any other protected characteristic. KARL STORZ is also committed to providing reasonable accommodations during our recruitment process. Should you need assistance or accommodation please email us at TaleoAdministrator@karlstorz.com.

Notice to Employment Agencies
This recruitment assignment is being managed directly by KARL STORZ's Human Resources team. Human Resources will reach out to our preferred, contracted agency partners in the rare instance additional talent options are required. Your respect for this process is appreciated. KARL STORZ does not accept unsolicited Agency resumes. Resumes received which were unsolicited by the KARL STORZ Human Resources department will be ineligible for referral fees.