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CVS Health

Runs pharmacies, health plans and clinics

Senior Legal Counsel - Intellectual Property, Enterprise Patents

Intellectual Property (IP)Posted on Nov 13
Full-timeWoonsocket, RI, USARemote

About the Job

Requirements

  • At least 8 years of experience in a wide range of intellectual property legal matters, primarily focused on patent, trade secret, and information technology law.
  • Juris Doctor degree from an accredited law school.
  • Membership in good standing in at least one U.S. state bar.
  • Registration to practice before the U.S. Patent and Trademark Office.
  • A degree or equivalent experience in a technical field; preferred areas include Computer Science, Computer Engineering, or Electrical Engineering.
  • Strong patent portfolio-building and invention-harvesting skills, including the ability to manage outside counsel efficiently in drafting and prosecuting new and pending patent applications and related filings.
  • Experience with transactional matters, including intellectual property licensing, technology agreements, and intellectual property aspects of mergers, acquisitions, and other strategic transactions.
  • Ability to shape and execute intellectual property strategies supporting business goals using sound practical judgment and business sense.
  • Ability to collaborate and serve as a strategic business partner, with analytical, problem-solving, and project-management skills and the ability to build and maintain strong relationships.
  • Ability to manage multiple projects and priorities effectively in a fast-paced environment.
  • Strong written and oral communication skills, including presentation skills.

Responsibilities

  • Collaborate with inventors, business leaders, and research and development and technology teams to identify strategic patenting areas, develop potentially patentable inventions, and evaluate inventions for patentability and strategic value.
  • Develop and implement strategies to build and maintain a strategic patent portfolio aligned with business objectives, including recommendations on filing, continuations, foreign filing, and maintenance decisions.
  • Oversee and manage outside counsel in drafting and filing patent applications, responding to office actions, and maintaining patent assets, while aligning prosecution strategy with business objectives and portfolio strategy.
  • Conduct or manage freedom-to-operate analyses to assess potential patent risks associated with product development and commercialization, including patent landscape analyses, evaluation of claim scope and validity, and risk-mitigation advice.
  • Provide legal advice and support on patent litigation and disputes, including strategy development, risk assessment, and coordination with external counsel.
  • Advise internal legal and business stakeholders on intellectual property aspects of technology agreements, including reviewing and drafting provisions concerning ownership, licensing, development, software, and technology.
  • Advise business and technology teams on identifying, protecting, using, and disclosing trade secrets and other confidential proprietary information.
  • Counsel and educate internal partners on intellectual property issues, including patents, trade secrets, clean-room development, and open-source software licensing.
  • Work cross-functionally with security and engineering teams to implement and refine open-source governance policies and procedures for the use, publication, contribution, and management of open-source software across the enterprise.
  • Advise on intellectual property issues involving artificial intelligence and emerging technologies, including inventorship, ownership, training and use of AI technologies, and protection of AI-related innovations.
  • Counsel and educate business leaders and technology teams across the company's businesses on patent, trade secret, and other technology-related intellectual property matters.
  • Provide periodic reports to senior management on the status and direction of the company's patent strategy.

Desired Qualifications

  • At least 2 years of in-house experience managing a patent portfolio, including advising business and technology teams on new inventions, processes, and products.
  • At least 1 year of transactional experience negotiating and drafting intellectual property provisions in agreements, including vendor contracts or joint development agreements.
  • At least 1 year of experience with open-source software, including reviewing licenses for software development and use and advising internal stakeholders on contributions of source code to open-source projects.
  • Experience with artificial intelligence, machine learning, data processing, or software patents and related intellectual property matters.
  • Experience advising on trade-secret protection and technology-related intellectual property matters.

About the Company

CVS Health

Runs pharmacies, health plans and clinics

CVS Health runs pharmacies, health insurance plans and medical clinics for individuals, employers and government programs across the United States. Its businesses include CVS Pharmacy, the Aetna insurer and Caremark, which manages prescription coverage and negotiates drug prices for health plans. Patients fill prescriptions in stores or by mail and receive care through walk-in clinics, primary care centers and home visits. The company earns money from prescription sales, insurance premiums, plan administration fees and clinical services, combining coverage with places to obtain treatment. Its first store opened in 1963, and its headquarters are in Woonsocket, Rhode Island.

Company size
10,001+
Company stage
IPO
Headquarters
Woonsocket, Rhode Island
Founded
1963

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