Job Summary (Primary function)
This position is responsible for providing legal services and counsel regarding intellectual property prosecution, management and strategy for the company’s biological pharmaceutical products and technologies.
Essential Functions of the Job (Key responsibilities)
• Manage the preparation, filing, prosecution and maintenance of patent applications and patents to obtain broadest possible protection for all aspects of the company's inventions relating to biological therapeutics.
• Provide legal advice and services regarding relevant intellectual property issues including inventorship, conception/reduction to practice of inventions, patentability, validity, enforcement and infringement.
• Assist in ensuring all commercially important assets are protected by valid patents and do not infringe valid third-party patents.
• Support US and foreign legal proceedings involving company or third party intellectual property, such as inter partes reviews, post grant reviews, oppositions, infringement/invalidity actions and appeals.
• Conduct, review and/or evaluate literature, patent and file wrapper searches on subject matter relevant to the company.
• Support IP due diligence teams for business development opportunities in biological therapeutic technologies.
• Review and provide advice to protect Incyte’s interest in scientific/technical/clinical publications originating either internally or with third party collaborators.
• Ability to work with outside US and foreign counsel to direct and manage activities.
• Develop a thorough understanding of the company's business, including its people, products, markets, facilities, customers and competitors and utilize that knowledge in providing guidance to internal clients.
• Establish a rapport and a working relationship with company business units at all levels to encourage and continue their proactive use of in-house legal counsel.
Qualifications (Minimal acceptable level of education, work experience, and competency)
• JD degree from an accredited institution and membership in good standing of at least one state bar and must be admitted and in good standing to practice before the United States Patent & Trademark Office (USPTO).
• MS, preferably a PhD, in biological or biochemical sciences, including a strong knowledge of molecular and cellular biology with a focus on antibody technology. Research experience a plus.
• 3-5 years of related legal experience as in-house and/or outside counsel, with a proven track record in IP preparation, prosecution and management of portfolios relating to the pharmaceutical or biotech industries.
• Strong understanding of and experience with laws, regulations and procedures of the USPTO, and a good working knowledge of the laws, regulations and procedures of foreign patent offices.
• Demonstration of solid organizational skills, the ability to think strategically and sound judgment in the analysis of complex business issues.
• Excellent written and verbal communications skills, including the ability to communicate concisely to clients, to integrate legal and business knowledge and to provide balanced advice regarding risks.
• Ability to manage multiple tasks simultaneously and to flourish in a fast-paced environment, both individually and as part of a team.
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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