IP Counsel

West Lafayette, IN
Full Time
10-17-2019
Practice Areas: Patent Preparation, Patent Prosecution Exp.: 10+ Years
Description:
About the role…
Inari is seeking an outstanding patent attorney to strengthen our internal IP practice. You will work closely with Inari’s science and business teams to ensure freedom-to-operate for its procedures, technologies, and products and develop, grow, manage, and protect the company’s intellectual property portfolio for its innovative agricultural and science-based technologies and products. This is an extremely interactive role that requires excellent communication skills and the ability to provide pragmatic and business-savvy advice, identify innovations, and succinctly identify and communicate decisions to both scientific and executive teams. The position reports to the VP Innovation Catalyst (Head IP).

The ideal candidate demonstrates the ability to execute and manage a global patent strategy for innovative clients while being equally hands-on and able to execute at a technical/tactical level; and has a plant sciences and/or agricultural industry background with deep experience in the development and protection of IP within this industry (pharma industry background with an interest to learn about the ag industry will be considered).

The focus of support will be Inari’s product development activities at our West Lafayette, IN facility. The position is ideally based in Inari’s premises in West Lafayette, IN, though Cambridge (MA) can be considered.

As Intellectual Property Counsel, you will...
  • Develop, manage and execute a comprehensive and effective global IP strategy for Inari’s portfolio of products and technologies at all stages of research, development, or commercialization
  • Ensure freedom to operate and minimize exposure to third party IP, including establishing IP landscape and “white space” analysis in cooperation with the science team; providing and drafting opinions
  • Collaborate with scientific and technology teams to build strong patent portfolios around key assets to ensure a long-term competitive advantage
  • Lead IP due diligence, review, and participate in agreement drafting and negotiations, including in-house drafting of certain patent applications and efficient management of outside counsel
  • Provide general and directed IP counsel and education to Inari scientists and management while operationally supporting Inari’s corporate and business development efforts with regard to IP due diligence, competitive intelligence, IP in-licensing
  • Advise with regard to brand protection by working with stakeholders to implement trademark strategy
  • Protect patent applications and manage IP disputes, engaging external counsel if needed

You bring...
  • Juris Doctorate and an advanced degree in molecular biology or biochemistry or related scientific field (Ph.D. strongly preferred)
  • 10+ years of patent experience including patent preparation and prosecution, IP landscape and FTO analysis, opinion work, strategic development with 5+ years of in-house IP experience, from within an Ag or Pharma company
  • Registration to practice before the U.S. Patent and Trademark Office (USTPO)
  • Substantive transactional experience and litigation experience preferred
  • Extensive knowledge of patent law and procedure, incl. international and foreign patent prosecution
  • A flexible, agile, personable, team-oriented approach; an ability to think “out-of-the-box”, and operate in a fast-paced, early stage, small company environment
  • A proactive, collaborative business-partnering mindset
  • Proven ability to set and meet ambitious deadlines, handle numerous multifaceted legal issues and see projects through to conclusion
  • Demonstrated ability to work collaboratively with both scientists and management
  • Ability to distill complexity and to communicate decisively with sound judgment
  • Strong leadership and influencing ability at all levels of the organization and with all internal and external constituencies
  • Exceptional communication skills, oral and written; ability to convey a compelling story across any communication medium, especially when negotiating or defending IP matters
  • Curiosity; desire to continuously learn
  • Creative and strategic thinking, willingness to be bold
  • A collaborative approach, open to giving and receiving ideas, perspectives, and feedback

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