Global Head of IP MedTech

Summary:

The Global Head of Intellectual Property will provide strategic intellectual property insight to the MedTech’s divisions’ senior management and prosecute, manage and use the divisions’ intellectual property to drive the divisions’ objectives and growth. This person will work to protect inventions arising from each division’s research and development centers, train each division’s research and development members on how to utilize intellectual property to advance each division’s business interests, and counsel division management regarding IP that affects each division’s commercial activities. In addition, this role will manage each division’s trademark portfolio, and in close connection with the Legal department, work with outside attorneys on

• the prosecution, enforcement and resolution of IP matters, and
• review of IP provisions in contracts, and providing strategic counsel on IP matters.

This role has a matrixed reporting line, directly to the Company President and dotted to the Division Presidents and Heads of R&D.

Responsibilities:

• Drive and support the Divisions’ IP teams and oversee and manage outside counsel working on the Division’s IP‐related matters. Selection of outside counsel to be determined and aligned among the MedTech divisions.
• Drive the creation and implementation of IP strategies, policies, guidelines, and objectives and implement IP best practices.
• Responsible for developing patent and intellectual property education programs for Division

personnel (with focus on the Divisions’ R&D team members), working closely with the HOYA Global IP team.

• Work closely with each Division Head of R & D & Product Management to develop IP strategies, evaluate invention disclosures, perform patentability searches, supervise filing by external counsel for patents and design protections. Supervise and control the docket for Division patentable inventions and protectable designs. Maintain the intellectual property portfolio of MedTech in line with the HOYA Group regulations.
• File for and maintain each Division’s trademarks (in collaboration with the other HOYA Group IP members and the Group’s outside trademark counsel ).
• Working closely with Division leadership and the HOYA and Divisional Legal teams, manage and resolve disputes related to the Division’s IP, including asserting the Division’s IP against infringers and defending the Division against third‐party claims of IP infringement.
• Work collaboratively with the HOYA Legal team in assisting in the drafting, negotiation and review of intellectual property‐related agreements.
• Serve as Company and Divisional functional lead on IP matters regarding acquisitions/ M&A/strategic partnership projects, including input into IP‐related strategy and assessment to maximize each Division’s understanding of IP value, concerns, and strategy, conduct IP due diligence and assist with drafting and negotiating IP related clauses.
• Oversee the development and management of the budget for Intellectual Property matters at the Divisions, including the patent and trademark budgets. Works closely with Division Presidents and Division CFOs to control and optimize IP‐related expenditures.
• Act as a member of the Company’s Global Management Team working with the Presidents of the Company and the Divisions.
• Run the Divisions’ cross‐functional IP committee (involving Commercial, R&D, Legal, Finance, and IP functions).
• Instill and champion quality and operational excellence standards for IP procurement and litigation. Contribute cross‐divisionally to HOYA Group’s IP strategies, policies, guidelines, and objectives.
• Effectively partner with team members in the MedTech Company and the HOYA and Divisional Legal Group on matters which require alignment and/or escalation.
• Drive the implementation of IP tools and processes throughout the organization
• Other duties may be assigned as deemed appropriate

Minimum requirements

• Education:

o Engineering degree from a recognized and credible university

o Has participated successfully in relevant education related to IP matters providing for a profound understanding of IP matters

o Relevant scientific or engineering background; engineering or physics preferred.

• Experience:

o Minimum 15 years of relevant management of IP portfolio, including several years of

leadership experience involving regular interaction with Global/Regional/Senior management.

o Preferably several years of experience in patent/legal matters in the relevant industry and a knowledge of relevant best practices.

o High quality people management skills to attract, retain and develop a highly skilled team.

o Proven expertise and judgment in working through complex IP issues in a global

environment, including those with significant strategic risk to the company.

o Able to understand the business environment of the Company and its Divisions and anticipate future challenges.

o Ideally experienced in matrix‐ cross cultural and functional teams with the ability to engage

and exchange within such organization

• Prior Experience working in Innovation and Technology desired
• Prior Experience working in-house in Medical Technology desired

Skills/ Competencies:

• Able to work well on a cross‐functional, cross‐cultural global team and facilitate timely solutions.
• Demonstrate client service orientation; respond quickly, clearly and pragmatically to urgent

situations and demanding clients.

• Strong executive presence, results‐oriented and able to work effectively in a fast‐paced and highly demanding environment. Able to quickly gain the trust and respect of senior executives and functional teams
• Excellent organizational skills; must be able to manage and prioritize multiple projects

simultaneously.

• Exceptional business presentation/communication skills.
• Accustomed to working with senior management.
• A resourceful, strategic and analytical thinker and creative problem solver who can help shape the future strategy of the division’s IP portfolio and streamline the operations of the division’s IP department.
• Fluent in English, any additional languages are a plus but not required.

It is the ongoing policy and practice of PENTAX Medical to provide equal opportunity in employment to all employees and applicants. No person shall be discriminated against in any condition of employment because of age 40 and over, color, disability, gender identity, genetic information, military or veteran status, national origin, race, religion, sex, sexual orientation or any other applicable status protected by state or local law.

Qualifications

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