Client: Thermo Fisher FEI
REF: 19100

Thermo Fisher Scientific Inc. is the world leader in serving science, with revenues of more than US$20 billion and approximately 65,000 employees in 50 countries. Thermo Fisher Scientific’s complementary business segments include Analytical Instruments, Life Science Solutions, Laboratory Products and Services, and Specialty Diagnostics. The company’s mission is to enable its customers to make the world healthier, cleaner and safer by helping its customers accelerate life sciences research, solve complex analytical challenges, improve patient diagnostics, deliver medicines to market and increase laboratory productivity.

Following a US$4.2 billion acquisition which completed in September 2016, FEI Company and its worldwide team of 3000 employees have become an integral part of Thermo Fisher Scientific’s Analytical Instruments business unit. As the world leader in high-performance electron microscopy, electron optics and focused ion beam technologies, FEI’s market-leading solutions deliver precision imaging for three-dimensional characterization, analysis and modification of materials and structures with resolution down to the sub-Ångström level.

The Role

Working as part of a small group, this is a newly created appointment in light of the increased strategic focus of the FEI business within Thermo Fisher Scientific. The successful appointee will support the company’s continuing success and growth, and fully capture and protect innovations that create value to the business. Provided with a dynamic and inspiring work environment, the potential to grow the portfolio and function significantly beyond its current scope and size, the successful candidate will be given the autonomy to shape his/her role. It is therefore imperative for the candidate to be highly independent, self-motivated, and possess an entrepreneurial spirit. There will also be opportunity to work on diverse legal matters such as business strategic protection of IP, licensing, IP litigation management/support, and dispute settlement. The successful candidate will be required to develop and foster strong relationships with the R&D community and business teams, as well as supporting and promoting IP awareness.

The key responsibilities will include the following:

  • Invention harvesting: interfacing with scientists to identify and take forward inventions. Managing and accessing IP disclosures. Evaluating and deciding whether or not to seek patent protection in conjunction with the participation of the commercial side of the company;
  • Drafting and prosecuting new patent applications, as well as managing cases that are handled by outside counsel;
  • Providing Freedom to Operate analysis and advising upon appropriate strategies for infringement avoidance;
  • Managing opposition and appeal cases before the European Patent Office through outside counsel;
  • Providing IP counselling and support in relation to contracts, collaboration, licensing and other IP relevant agreements;
  • Handling patent enforcement, infringement matters, and litigation as and when necessary.

The Candidate

The successful candidate is likely to fulfill the following criteria:

  • Be a fully qualified European Patent Attorney;
  • Possess at least five years’ post-qualification experience ideally acquired from an in-house IP department or a reputable IP private practice/ law firm;
  • Possess an excellent technical background in Physics, Electrical or Electronic Engineering, or other related technical disciplines;
  • Fluency in both written and spoken English;

If you would like to explore this opportunity further, please contact

Rene Chung

Partner

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