Description:
About the role:A Pharmaceuticals Company is seeing a Patent Attorney II. To perform, manage, direct, and leverage designated patent and related intellectual property (IP) activities within the research and development (R&D) organization of Novartis
What you will be doing:
- Provide clear, informed and sophisticated counseling to Novartis R&D clients on opportunities to protect their inventions, create IP portfolios, advise on publication strategies, and mitigate third party risks.
- Build and manage patent portfolios for Novartis R&D projects by identifying inventions and preparing, prosecuting, maintaining, and defending patent filings for them, especially in technical areas related to new chemical entities and their uses, processes, platforms, and technologies, as well as clinical developments.
- Render legal opinions with respect to patentability, validity, and freedom to operate, and formulate patent strategies for Novartis R&D clients that secure IP positions and freedom-to-operate (FTO), as well as enable IP defense(s).
- Apply deep expertise in national patent law and practice, in particular for the US but also other major jurisdictions such as EP, JP and CN, including patent trends and case law developments, to devise patent strategies and advice.
- Understand other forms of protection relating to exclusivity, and apply as required.
- Communicate effectively and clearly with colleagues and leadership in the legal and IP function as well as the R&D organization.
- Build and manage external relationships with outside counsel and collaborators, including substantial interactions within a multicultural global patent function.
- Conduct due diligence assessments and counsel based on these assessments, including FTO, infringement and validity analyses, and risk evaluation and mitigation.
- Provide IP support for transactional projects, such as research collaborations and in-licensing opportunities, including advice on contract drafting and negotiation.
- Perform timely review of publication requests.
- Deliver work results on-time, on-target, and within budget.
- Continue professional development and contribute to development of IP colleagues.
Role Requirements
Essential Requirements:
- J.D. degree with admission to at least one state bar & registered to practice before US Patent Office required
- Bachelor degree in chemistry or equivalent; MS/ PhD, or equivalent, in organic chemistry or pharmaceutical science is preferred
- PLUS
- 1-2+ years exposure to the drug discovery and development processes utilized at pharmaceutical and/or biotechnology companies preferred
- 7+ years' experience as a patent practitioner in a law firm or in the pharmaceutical or biotechnology industry is required
- Expertise in local (US) and PCT law, filing process and prosecution practice; detailed understanding of counterpart European patent law and other major global patent systems is required
- Strong organization and time management skills with flexibility, creativity, resourcefulness to successfully prioritize and manage multiple, competing priorities simultaneously is required
- Strong customer-service experience & focus to build and sustain effective partnerships with key stakeholders and project teams is required
- Well-developed research and critical thinking skills, and sound decision-making abilities, with attention to detail to produce consistently accurate work is required
Desirable Requirements:
- Strong scientific background in chemical sciences, in particular organic or pharmaceutical chemistry; preferably including direct lab experience is preferred
- Experience integrating global outlook and management of product lifecycle into decision-making process is preferred
