Patent Counsel, Intellectual Property

Description:

Summary / purpose of the position
Reporting to the SVP, Chief Intellectual Property Counsel, the Patent Counsel, Intellectual Property will be responsible for managing intellectual property matters critical for the Company's success, including litigation, licensing and other complex business transactions, patent drafting, prosecution and enforcement, publication review, due diligence and opinion work, and other strategic IP initiatives. The Patent Counsel, Intellectual Property will provide counsel to senior business leaders and be an integral business partner to the Company's research and development organization, strategic business units, and corporate counsel. The Patent Counsel, Intellectual Property will also be responsible for managing relationships with outside counsel.

Main responsibilities / job expectations
Responsibilities will include, but are not limited to, the following:

• Develop and execute global patent strategies for commercial products, pre- and post-POC development candidates, and internal and/or in-licensed research programs
• Prepare and prosecute patent applications, including supervision of outside counsel
• Monitor and analyze competitive intellectual property positions; independently carry out patentability, inventorship, and freedom-to-operate analyses and render opinions
• Direct outside counsel in opinion work and adversarial proceedings including European oppositions, post-grant proceedings, and/or IP litigation, in consultation with SVP, Chief IP Counsel
• Actively participate on cross-functional project teams and advise internal clients regarding IP issues and strategic decisions
• Collaborate with global and local Regulatory and Commercial colleagues to maximize product exclusivity and ensure compliance with patent listing regulations
• Lead and conduct IP due diligence activities in support of business transactions
• Review and assist in negotiating IP provisions of agreements, including license agreements and collaboration agreements
• Review IP aspects of publications
• Conduct internal IP training programs to increases IP understanding and awareness
• Demonstrate commitment to high moral standards and business ethics

Knowledge, abilities & experience
Education / Certifications:

• J.D. from an accredited U.S. law school and admission to at least one state bar
• Registered before the U.S. Patent and Trademark Office
• M.S. or Ph.D. degree in organic chemistry, biochemistry, molecular biology, or similar life sciences technical disciplines, or equivalent pharmaceutical industry research experience

Experience:

• 10+ years post-law school patent law experience, preferably related to pharmaceuticals; at least 2 years in a corporate setting preferred
• Broad knowledge of global patent law and procedure; experience with patent litigation and administrative patent challenges preferred

Languages:

• English

• Law and Government - Knowledge of intellectual property laws, precedents, government regulations, and other IP office rules
• Scientific background - Knowledge of the chemistry/biochemistry/biology of drug compounds and understanding of the drug development and approval process
• Ability to approach IP creation and protection with a strategic mindset by anticipating future business, competitive, and legal risks and opportunities and offering creative solutions
• Strong advocacy and negotiating skills, including experience in drafting and negotiating IP terms in business transactions
• Demonstrated ability to collaborate effectively with people from diverse technical and cultural backgrounds
• Exceptional interpersonal skills and the ability to communicate effectively with senior business leaders and other colleagues at all levels of the organization
• Ability to balance and prioritize multiple tasks, and to respond effectively to rapidly changing priorities and deadlines

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