The Patent Attorney reports directly to the VP, Associate General Counsel. Responsibilities will include advising the company on IP issues, developing and coordinating IP strategy, and supervising outside counsel. This position works on a broad spectrum of IP issues, and specific duties include origination and prosecution of patents, domestic and international, patentability, freedom-to-operate and validity opinions, patent oppositions, collaboration and licensing agreements, IP due diligence and M&A support, and litigation support.
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Manage and prosecute docket of multiple patent portfolios.
Communicate with research and development teams regarding identification and development of IP supporting new products.
Advise commercial teams on all aspects of pharmaceutical, regulatory and patent law, including exclusivity periods, potential launch dates, etc.
Support M&A teams regarding IP due diligence and IP-related transaction support.
Manage external counsel, including work product, budgets, and invoices.
Communicate key matters and issues to VP, Intellectual Property.
Perform other duties as assigned.
Knowledge of:
Strong knowledge of US and foreign patent office procedures and practice.
Familiarity with Food, Drug and Cosmetic Act and related regulations.
Computer operations and software applications, including Word, Excel, and PowerPoint.
Skills/Experience:
Substantial experience in domestic and foreign patent prosecution, as well as European opposition practice.
Experience in IP due diligence and IP related transactions.
Experience in a wide range of IP matters in areas including patent origination and drafting, freedom to operate patentability, non-infringement and invalidity opinions, licensing, and internal processes around IP development.
Strong negotiation skills required.
Expert-level research skills.
Ability to work independently.
Strong verbal and written communication.
Attention to detail, the ability to manage multiple projects and ability to adapt quickly.
Experience:
Minimum six (6) years of experience prosecuting patent applications and IP counseling with a law firm or in-house within a pharmaceutical company. Experience with IP development of small molecules in CNS, gastroenterology, ophthalmology, or anti-infective fields preferred.
Education:
Possession of at least a B.S. degree in Chemistry, Pharmacy, or Pharmaceutical-related field preferred. Advanced degree preferred.
Possession of a Juris Doctorate (JD) from a major accredited Law School, a member of at least one state bar and registered to practice before the USPTO.
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