Senior Patent Attorney

Boston, MA
Full Time
06-23-2021
Exp.: 5 - 8 Years
Description:
PureTech Health has an immediate opening for an experienced Patent Attorney to join its growing in-house IP team. Reporting to the SVP, Head of IP, the patent attorney will actively participate in developing and managing the company’s extensive intellectual property portfolio. We are seeking an experienced attorney who has significant depth of experience in a wide range of intellectual property matters and high technical competency in the life sciences. The successful candidate will engage effectively and independently with PureTech’s internal functions, including various research and development teams, and colleagues in business development, finance, clinical development, regulatory, and manufacturing to align IP strategy with corporate goals. The candidate must possess sound knowledge and judgment of IP laws and concepts, be an analytical and creative thinker, have exceptional oral and written communication skills, and be proficient in time-management and task prioritization. The position requires a motivated attorney who thrives in a fast-paced, dynamic and collaborative environment.

Key Responsibilities:
  • Monitor research and development activities of the company’s internal pipeline technologies
  • Work directly with various R&D teams to harvest and evaluate new innovations, as well as ascertain claiming strategies and technical details about inventions
  • Draft and prosecute patent applications for pre-clinical and clinical-stage technologies and/or manage outside counsel on preparation and prosecution
  • Liaise with external counsel as necessary to strategize, procure, and protect company intellectual property
  • Work closely with company’s academic/pharma partners and their legal counsel to execute filing and prosecution strategy for in-licensed technologies
  • Collaborate with business development teams on IP-related alliance matters
  • Conduct prior art searches and third-party patent monitoring
  • Conduct or oversee patentability, non-infringement, invalidity, competitive landscape, and freedom-to-operate analyses
  • Conduct IP due diligence for in-licensing opportunities
  • Manage oppositions and other contested proceedings as needed
  • Review proposed scientific disclosures and oversee disclosure review systems and policies
  • Perform trademark prosecution and strategy
  • Manage and improve processes for intake and tracking of invention disclosures and prosecution dockets
  • Manage IP budgets
  • Perform critical role in setting and implementing IP strategy in alignment with business objectives
  • Provide strategic counseling to company management on IP matters

Qualifications:
  • PhD in a life sciences discipline (e.g., biology, chemistry, biochemistry, cell biology, molecular biology or other technical degree relevant to biotechnology) with experience procuring patents relating to both large and small molecule technologies
  • JD from an accredited law school and admission in good standing to the bar of at least one state
  • Registration to practice before the U.S. Patent and Trademark Office
  • At least 5-8 years of experience in patent preparation and prosecution in the biological and chemical sciences
  • Proficient in MS Office suite including PowerPoint, Word, Excel and Outlook and IP portfolio analysis software
  • Familiarity with patent management database systems (e.g., CPI) strongly preferred
  • IP practice experience in both law firm and bio/pharmaceutical corporate settings is a plus
  • Understanding of key regulatory considerations in biologics and small molecule drug development is a plus
  • Outstanding research and analytical skills
  • Excellent oral and written communication skills
  • Experience handling a large and sophisticated IP docket with minimal direction
  • Practical problem solver with ability to run multiple projects against competing priorities
  • Possess strong interpersonal skills and the ability to work collaboratively with other legal group members and with other company functions

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