Essential Functions of the Job (Key responsibilities)
- Oversees the global corporate intellectual property estate and strategy to unlock and ensure protection of company's IP assets.
- Responsible for and manages corporate IP opposition procedures and/or litigation, including Hatch Waxman.
- Conducts, evaluates, and provides counsel on IP due diligence for business development projects.
- Manage and directs the team of attorneys and paralegals responsible for the global intellectual property estate.
- Defines and manages the budget for the global intellectual property estate.
- Patents: provides legal advice and service on patent and intellectual property including discovery, patentability, validity, and infringement of inventions and/or patents. Manages patent appeal and interference proceedings consistent with company's products and technology. Works with outside counsel to direct activities as required.
- Trademarks: Oversees and manages the global trademark estate.
- Agreements: Provides strategic input into contracts involving licensing, acquisitions, third party collaborations, material transfer, sponsored research, third party research services, consulting, confidentiality, and related contract matters. Negotiates and draft patent licenses and other related agreements.
- Reviews, provides counsel, and sets policy to protect company intellectual property interests in all publications, presentations originating either internally or with third party collaborators, communities and/or suppliers.
- Conducts and evaluates literature, patent, and file wrapper searches on all subject matter relevant to the company for patentability, validity, and freedom to operate issues.
- Establishes a rapport and a trusted working relationship with executive management and company personnel at all levels to encourage and continue the proactive use of in-house legal counsel.
- Provides day-to-day legal advice regarding a wide range of activities and programs related to drug product development and medical affairs.
Qualifications (Minimal acceptable level of education, work experience, and competency)
- J.D. degree, as well as membership in good standing of at least one state bar; and must be admitted, and in good standing, to practice before the USPTO.
- M.Sc. or Ph.D. in life sciences, preferably chemistry and/or biology.
- At least 15 + years of related experience, with 10 years in-house legal or related experience and proven track record in IP management of a pharmaceutical or biotech company.
- Skilled in talent management and people influencing.
- Successful management and negotiation skills.
- Good working knowledge of liability issues.
- Excellent written and verbal communications skills, including the ability to communicate concisely to scientists and business partners, to integrate legal and business knowledge and to provide balanced advice regarding risks.
- Experience partnering with and supporting fast-paced internal partners and business development initiatives to complete transactions; strong organizational skills to prioritize and manage multiple time-sensitive projects simultaneously.
Disclaimer: The above statements are intended to describe the general nature and level of work performed by employees assigned to this job. They are not intended to be an exhaustive list of all duties, responsibilities, and qualifications. Management reserves the right to change or modify such duties as required.
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