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Associate/Assistant General Counsel, Intellectual Property

Boston, MA

PathAI, a leader in advancing precision health, is on a mission to improve diagnostic outcomes and advance therapeutic development through the use of artificial intelligence (AI) and laboratory services. PathAI’s digital products and services are used by biopharmaceutical manufacturers, contract research organizations, academic institutions, and health care organizations to help tackle cancer, liver conditions, and other diseases by leveraging state-of-the-art machine learning. Rigorous science and careful analysis are critical to the success of everything we aspire to do. Our team, composed of diverse employees with a wide range of backgrounds and experiences, is passionate about solving challenging problems and making a huge impact.

This position, part of PathAI’s growing Legal team, will manage legal issues related to the intellectual property (IP) portfolio of PathAI. The AGC, Intellectual Property will also provide guidance during research and commercial contracting to protect and enhance the company’s IP ownership, as well as manage projects related to the development, protection and monetization of PathAI IP. The candidate will work with team members from diverse backgrounds, such as engineering, machine learning, scientific programs and medical affairs, regulatory, and product and business development teams. This position reports to the General Counsel of PathAI and will have the opportunity to work directly with senior leaders and their teams across the company.

 

In this role, you will develop an in-depth understanding of PathAI’s capabilities, products and services, including AI and machine learning, digital pathology, and pathology laboratory services, in order to provide expert counsel on the management and protection of patents, copyrights, trademarks, and trade secrets. You will have an opportunity to work with our business development teams who identify and negotiate partnerships and collaborations with biopharmaceutical companies and technology service providers. Successful candidates will be able to evaluate and balance both legal and business factors when providing advice. 

 

Successful candidates will have a mix of private practice and in-house experience, and be able demonstrate significant knowledge of IP issues facing digital/tech/software development companies and medical technology/life sciences companies. The ideal candidate will have significant experience advising clients in the medical device, digital pathology, and artificial intelligence industries, and be able to demonstrate examples of delivering clear, practical, and cost-effective legal advice to in-house clients including both IP advice and general transactional and product development legal guidance.

This role is based in one of our offices (Boston or Memphis), but a remote arrangement will be considered for ideal candidates.  Seniority will be commensurate with experience.

 

Responsibilities 

  • Serve as lead counsel on IP issues across the company. Draft, review, and negotiate IP-related agreements/terms including licensing & collaboration agreements, master service agreements, research agreements, and tech & material transfer agreements. Support mergers and acquisitions including IP due diligence.
  • Give guidance to product, commercial, and operations teams on invention mining, IP portfolio development & management, and product development lifecycle.
  • Prepare patents, freedom to operate analysis, landscape searches, trademarks and copyrights filings, and other IP work. Perform patent prosecution responsibilities. As needed, manage outside counsel.
  • Provide product counseling and transactional legal advice as needed.
  • Conduct pre-publication review of scientific articles, posters, and other materials.
  • With the General Counsel and other PathAI leaders, provide advice on the impact of IP to the company’s overall strategy including how IP development, protection and monetization is incorporated into product roadmaps and transactions, and identify and execute IP strategies to achieve company goals and minimize risk.
  • Educate employees on legal issues in IP and best practices. Develop strong business relationships, checkpoints and/or systems to protect and monetize the company’s evolving IP.
  • Support the international growth of PathAI by performing or directing necessary IP-related activities outside the United States.
  • As needed, support regulatory filings with government agencies related to our products including, but not limited to, medical device applications and related filings.
  • Be willing and able to work on IP matters both big and small with employees across the PathAI organization…from new college graduates to senior executives.
  • Support PathAI’s goals of fostering a work environment that prioritizes diversity, equality, and inclusion and help build a culture of trust and respect within our company.

 

Requirements

  • Juris Doctor (or equivalent) and active bar admission in at least one state;
  • 10+ years experience practicing IP law with a firm or within the IP team of a large-to-mid sized company, with direct and significant expertise advising on IP matters related to medical technology, biotechnology, medical devices, diagnostic technology, health care software, artificial intelligence, or related industries;
  • Undergraduate or graduate degree in computer science, engineering, or biological sciences, or demonstrated expertise in one or more of these subject areas;
  • Registered to practice before the US Patent & Trademark Office (USPTO);
  • Direct experience drafting and managing US and international patent applications, and experience either directing or managing patent prosecutions;
  • Demonstrated experience working successfully with non-lawyer business teams on issues related to patentability, patent infringement, patent validity matters, freedom to operate, landscape searches, invention mining, portfolio development & management, trademark, trade secret, and copyright matters;
  • Works well in a distributed & virtual team environment and will bring a creative approach to problem solving, IP development, and IP management;
  • Ability to travel 10-20% (if not local to Boston).

 

Benefits

For the right candidate, we'll offer a competitive salary plus equity. Your compensation is rounded out by a strong benefits package:

 

  • Flexible work hours, with work-from-home options available 
  • Three weeks of paid leave per year, an additional two weeks of sick time, plus extended holidays and team-approved leave
  • Ten days of 100% subsidized childcare per year
  • Healthcare, vision, and dental insurance plans (HMO or PPO), with voluntary add-ons available for dependent care, life, and accident coverage
  • Commuter benefit available for public transit or parking

 

Most importantly, you'll be doing important work with a team of people with whom you'll genuinely enjoy spending the day!

 

PathAI is an equal opportunity employer, dedicated to creating a workplace that is free of harassment and discrimination. We base our employment decisions on business needs, job requirements, and qualifications — that's all. We do not discriminate based on race, gender, religion, health, personal beliefs, age, family or parental status, or any other status. We don't tolerate any kind of discrimination or bias, and we are looking for teammates who feel the same way.