Client: Leica Microsystems
REF: 21940

 

leica senior ip counsel

Founded as a family business in the 19th century, Leica Microsystems is now a global enterprise that develops and manufactures microscopes and scientific instruments for the analysis of microstructures and nanostructures. Its leitmotif is “with the user, for the user”, put into words by Ernst Leitz I, the entrepreneur who led the business to world renown.

THE OPPORTUNITY

Based in either Mannheim or Wetzlar, the Senior IP Counsel will be a key member of the integrated intellectual property team of Leica Microsystems and Danaher. The successful candidate will report to the Chief IP Counsel and will regularly interact with associates at various levels up to the Vice President level and directly supports LMS’ world-leading Life Science Research Business. As this is a newly created role, it is expected that the successful candidate shows a hands-on approach who can shape the role to best serve the needs of the company and its various stakeholders.

The key responsibilities will include the following:

  • Close partnering with the Life Science Research Business Unit and R&D to jointly drive strategic IP initiatives.
  • Expand the IP portfolio behind the Aivia software suite to protect the revenue associated with it.
  • Harvesting and generation of ideas that lead to invention disclosures.
  • Drafting of patent applications and prosecution through the use of Outside Counsel.
  • Providing sound and practically relevant IP advice to the business.
  • Drafting and negotiating patent licensing agreements.
  • Managing IP litigation with an emphasis on early identification of strengths and weaknesses, and opportunities for resolution.
  • Driving proactive and strategic competitive IP landscape assessments and, together with the business, devising the most impactful IP strategy.
  • M&A due diligence – identifying and evaluating IP risks and opportunities associated with potential acquisition targets.
  • Training of legal and technical personnel in IP issues and best practices, as well as frequently interacting with other IP attorneys from the other Operation Companies of Danaher to exchange best practices.

THE CANDIDATE

This is an equal opportunity appointment. Any biased reference in the text is made merely for the sake of brevity and convenience. The successful candidate is likely to fulfil the following criteria:

  • An advanced degree in Software or Computer engineering with experience in Life Science Research imaging is highly preferred. Candidates with other technical backgrounds but proven experience in digital imaging and analysis will be also considered.
  • Knowledge of key technologies used in technology fields of relevance to Leica Microsystems
  • Preferable experience in the Digital Imaging area/industry.
  • Registered German and European patent attorney
  • Multiple years of IP practice in a well-known In-House department as well as solid training within an IP law firm.
  • Must demonstrate strategic thinking, understanding of value chains, assume a broad business perspective and manage tactical situations.
  • Ability to convert IP legal issues into readily understandable business issues for decision by our business personnel.
  • Strong people and communication skills for dealing with a wide range of personnel, from the IP-savvy to novices, and from top management to hands-on operating personnel and technology experts on a multi-functional basis.
  • High integrity and ethics in all dealings – internal, external, and personal. Non-political in conduct, while understanding internal and external political dynamics.
  • Sense of humour, openness to learning, high energy, results-oriented; combines personal humility and humour with the highest professionalism for the company.
  • Fluency in English and German and willingness to travel.

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

Rene Chung

Partner

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