Intellectual Property Counsel/Agent, Digital Pathology

F. Hoffmann-La Roche AG

Tucson, Northern (AZ, KY)

Hybrid

USD 162,000 - 302,000

Full time

2 days ago
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Job summary

Roche Diagnostics seeks an Intellectual Property Counsel/Agent to draft and prosecute patent applications in digital pathology. You will work with R&D, data science, and software teams to capture inventions in AI-enabled tissue diagnostics and guide global patent strategy.

The role requires hands-on patent drafting/prosecution experience, USPTO eligibility, and the ability to manage external counsel. Location is Tucson, AZ, with openness to other Roche hubs in California or Boston.

Qualifications

  • 3–7+ years of hands-on patent drafting, prosecution, portfolio strategy, and legal counseling focused on software, AI, and/or computational biology.
  • Registered to practice before the USPTO as a Patent Agent or Patent Attorney with active bar membership.
  • Bachelor's degree required; advanced degree in CS/Bioinformatics/Computational Biology/Engineering or related field is a plus.
  • Experience drafting and prosecuting complex software/AI patent claims; familiarity with deep learning frameworks and image analysis tools.
  • Ability to translate complex algorithmic concepts into robust patent disclosures and engage with multi-disciplinary teams.

Responsibilities

  • Draft and prosecute US and international patent applications.
  • Directly manage outside counsel for drafting and prosecution.
  • Develop and implement global IP strategies for software/AI technologies.
  • Conduct FTO analyses and patentability studies for open-source/software integrations.
  • Collaborate with R&D, data science, and engineering teams to harvest inventions.

Skills

Patent drafting
Patent prosecution
Software/AI patents
Communication skills

Education

BS degree
MS/PhD in CS/Bioinformatics/EE/Math/Physics

Tools

USPTO/Patent Office

Job description

## Intellectual Property Counsel/Agent, Digital PathologyApply: Tucson: Santa Clara: Pleasanton: Boston: Full time: Posted Today: End Date: September 28, 2026 (13 days left to apply): 202609-123345At Roche you can show up as yourself, embraced for the unique qualities you bring. Our culture encourages personal expression, open dialogue, and genuine connections, where you are valued, accepted and respected for who you are, allowing you to thrive both personally and professionally. This is how we aim to prevent, stop and cure diseases and ensure everyone has access to healthcare today and for generations to come. Join Roche, where every voice matters.### ### The Position**Intellectual Property Counsel/Agent, Digital Pathology**Roche Diagnostics is pushing the boundaries of precision medicine by converging tissue diagnostics with cutting-edge artificial intelligence, computer vision, and spatial biology workflows. As an IP Counsel or Registered Patent Agent within our IP Legal Department, you will sit at the forefront of this digital revolution. In this hands-on role, you will directly draft and prosecute patent applications while managing outside counsel and shaping global patent strategy, portfolio development, and risk mitigation for Roche's next-generation Digital Pathology ecosystems.**The Opportunity:**In this role, you will serve as a strategic legal and technical advisor to R&D, data science, software engineering, and business development teams, directly capturing and protecting inventions in computational diagnostics.* First-Principle Application Drafting: Directly draft high-quality US and international patent applications covering core computer vision models, agentic AI workflows, spatial biology pipelines, and clinical-grade bioinformatics algorithms.* Hands-on Patent Prosecution: Directly prepare and file responses to Office Actions, conduct examiner interviews, and steer prosecution strategies before the USPTO and foreign patent offices to secure broad, enforceable claims for digital health software architectures.* Outside Counsel Management: Select, direct, and manage external legal counsel for overflow drafting, global prosecution, and specialized portfolio projects to ensure technical precision, cost efficiency, and alignment with Roche's overarching IP strategy.* Strategic Portfolio Management: Formulate and execute robust global IP strategies covering deep learning neural networks, proprietary diagnostic algorithms, and multi-modal diagnostic fusion engines.* Freedom-to-Operate (FTO) & Risk Assessment: Conduct complex FTO analyses, landscape reviews, validity assessments, and patentability studies specifically tailored to open-source software integration and cloud-native digital health infrastructures.* IP Harvesting & R&D Integration: Partner directly with software engineers, machine learning researchers, and pathologists to systematically harvest inventions arising from foundation models, image segmentation, and quantitative biomarker analysis.**Who You Are:*** You are a strategic, hands-on IP professional who thrives at the intersection of complex algorithmic models and advanced tissue diagnostic pathology.* Experience: 3–7+ years of dedicated experience in hands-on patent drafting, prosecution, portfolio strategy, and legal counseling focused on software, artificial intelligence, machine learning, and/or computational biology.* Credentials: Registered to practice before the United States Patent and Trademark Office (USPTO) as a Patent Agent or Patent Attorney. Attorney applicants must possess an active license in good standing with at least one US state bar.* Education: B.S. required; advanced degree (M.S. or Ph.D.) in Computer Science, Bioinformatics, Computational Biology, Electrical Engineering, Mathematics, Physics, Bioengineering, or a closely related quantitative field is a plus.* Technical & Prosecution Mastery: Demonstrated track record of personally drafting and successfully prosecuting complex software and AI patent claims, alongside familiarity with deep learning frameworks, spatial transcriptomics/proteomics data processing, and automated image analysis tools.* Legal & Analytical Skills: Deep expertise in navigating nuanced software patentability landscapes (e.g., overcoming 35 U.S.C. § 101/Alice challenges and foreign patentability hurdles for computer-implemented diagnostic inventions).* Communication: Exceptional oral and written communication skills with a proven ability to translate intricate algorithmic concepts into strong patent disclosures and effectively engage with multi-disciplinary scientific and executive stakeholders globally.**Location:** Tucson, AZ (Preferred). Open to other U.S. Roche hubs: Pleasanton, CA; Santa Clara, CA; or Boston, MA.**Relocation benefits are not available for this job posting.**The expected salary range for this position based on the primary location of Tucson, AZ is $162,400 - $301,600. Actual pay will be determined based on experience, qualifications, geographic location, and other job-related factors permitted by law. A discretionary annual bonus may be available based on individual and Company performance. This position also qualifies for the benefits detailed at the link provided below.
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