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Director of Intellectual Property, NanoString, Seattle, WA

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Harris Legal Search has been exclusively engaged by NanoString Technologies to recruit a Director of Intellectual Property to lead NanoString’s overall global IP strategy and patent portfolio management, and manage outside patent counsel.

The Director of IP will focus on global IP portfolio development, strategy, and transactional support for complex and innovative technology in the field of life sciences research tools and instrumentation, primarily for genomics and proteomics.  This hire will report to the VP, Legal Affairs and also work closely with the Chief Scientific Officer & Senior Vice President, Research & Development.

RESPONSIBILITIES

  • Manage the prosecution and enforcement of NanoString’s patent portfolio, including participating in and overseeing patent application drafting/schedules, conducting literature and patent searches, identifying and assessing third party applications, patents, and file histories, and supervising outside patent counsel.
  • Participate in negotiation of IP-related provisions in technology collaborations, licenses, R&D, product development, and other technology agreements and prepare, review, and maintain IP contract language for such contracts.
  • Work closely with scientists, researchers, and other applicable company stakeholders regarding on-going scientific work, identification of inventions, invention records, and patent filing strategies.
  • Work with software developers and bioinformatics teams to identify legal issues relating to software development, open source software, data analytics, and cloud computing; analyze the implications of using, contributing to, and distributing open source code; ensure that product teams comply with open source software license terms and attribution obligations; review software licenses for suitability for development of products and inclusion in products.
  • Provide counsel on associated intellectual property issues to internal business and legal clients.
  • Keep researchers and other applicable company stakeholders informed of key milestones in patent drafting and prosecution.
  • Lead or support IP due diligence on business and financing transactions.
  • Correspond with patent licensees and licensors as necessary, and provide input on third party-licensed patent prosecution.
  • Occasional adversarial work, including litigation, oppositions, risk assessments, and IP evaluation.
  • Establish and monitor patent portfolio budget.
  • Manage the prosecution and enforcement of NanoString’s trademark portfolio.
  • Manage and advise on trademark clearance and usage.

QUALIFICATIONS

  • Must have at least 10 years of experience in a law firm and/or in-house legal department in patent prosecution and enforcement in the chemical and/or biotechnology art units and sophisticated IP transactions in biotechnology, medical device, or diagnostics, including licensing, development, IP acquisition, due diligence, and other technology related transactions.
  • Experience in managing patent portfolios.
  • Licensed to practice before the U.S. Patent and Trademark Office.
  • Experience in IP jurisprudence in United States and abroad regarding genomics, proteomics, spatial transcriptomics and imaging, and next generation sequencing.
  • Advanced degree in a relevant scientific field (e.g., organic or medicinal chemistry, molecular biology, biotechnology, physics, microfluidics).
  • Ability to balance competing priorities in a fast-paced environment.
  • Demonstrated ability to collaborate in a cross-functional environment and work independently.
  • Excellent written and verbal communications skills, attention to detail, and customer-service orientation.
  • Excellent presentation skills, including demonstrated ability to convey complex ideas clearly.
  • Admitted to the Washington State Bar or eligible to become Washington Registered In-House Counsel.

COMPANY

NanoString Technologies (NASDAQ: NSTG) is a publicly held provider of life science tools for translational research. The company’s technology enables a wide variety of basic research and translational medicine applications.  NanoString’s products are based on a novel digital molecular barcoding technology  invented at the Institute for Systems Biology (ISB) in Seattle under direction of Dr. Leroy Hood. The company was founded in 2003 with an exclusive license to develop and market the technology. In 2008, NanoString launched its first commercial instrument system and began international sales operations with its first multiplexed assays for gene expression analysis. In 2010, the company launched new applications for the system to support microRNA analysis and copy number variation detection. In 2019, the company launched the GeoMx™ Digital Spatial Profiler enabling highly-multiplexed spatial profiling of RNA and protein targets in a variety of sample types, including FFPE tissue sections. 

Organizations performing cancer research, biomarker validation and screening, and next-generation sequencing validation are rapidly adopting the nCounter® Analysis System. By providing simple, multiplexed digital profiling of single molecules, the NanoString platform represents a natural, digital downstream companion to next-generation sequencing and enables researchers to embark on studies that were previously inconceivable.

Leading researchers and institutions are finding that NanoString’s nCounter system provides the ideal platform on which to validate their discoveries and translate them into clinically useful diagnostic assays. The nCounter system is uniquely positioned to support translational research because it provides more reproducible results than methods requiring amplification, and generates high-quality data from the difficult sample types common in clinical research, including Formalin-Fixed Paraffin-Embedded (FFPE).

In addition to continuing to extend the applications for the nCounter system in the discovery, target validation and routine testing segments of the genomics research market, the company’s goal is to become the platform of choice for diagnostic testing based on multiplexed gene signatures that can be offered in hospitals and pathology laboratories worldwide, following appropriate regulatory approvals. These two synergistic areas of business focus provide researchers with a seamless transition from discovery to diagnostics.

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