Actively Hiring - Counsel to support business and Intellectual Property decisions for a biotech company.
Must act responsively, set priorities, exhibit strong leadership skills, exercise independent judgment, work well within a team, and utilize the highest professional standards.
Responsibilities will include:
- Provide a high-quality level of professional, cost-effective, proactive, and responsive legal services to internal clients in the area of intellectual property.
- Manage the company’s patent portfolio, including soliciting and evaluating invention disclosures, conducting patentability investigations, filing, prosecuting, issuing, and maintaining patent applications and patents domestically and internationally in coordination with and through managing outside counsel.
- Where appropriate, enforce intellectual property rights through investigation of competitors’ products and supporting the negotiation of favorable intellectual property licenses and litigation.
- Analyze third-party claims alleging intellectual property infringement by company products or services, including conducting and/or managing infringement and validity investigations and supporting the negotiation of favorable intellectual property licenses and defense of the company in intellectual property litigation.
- Provide support to the legal transactional team by analyzing and commenting on IP terms of various agreements.
- Provide legal advice on obtaining copyrights, protecting trade secrets, and avoiding infringement of the copyrights and trade secrets of others.
- Manage the trademark process, including acquisition of trademarks, advising and training on mark selection and use, conducting right-to-use investigations, and filing, prosecuting, issuing, and monitoring trademark applications and registrations in coordination with and through managing outside counsel.
- Maintain up-to-date knowledge of the company’s technology.
- Review company product literature, reports to customers and collaborators, and proposals to the government to ensure the intellectual property in such disclosures is adequately protected.
- Meet promised deadlines for rendering advice or preparing documents, and be available when called on by management and staff.
- Proactively anticipate IP legal issues before they become problems by practicing preventive law and by early involvement.
- Provide training and written guidelines on the acquisition and preservation of intellectual property rights.
- Specific duties will vary depending on departmental requirements
EXPERIENCE AND QUALIFICATIONS:
- Juris Doctorate degree from an accredited law school and a current license to practice before a state bar is required.
- A minimum of 10 years of legal experience combined at either the USPTO, a law firm, or an in-house position prosecuting advanced biotechnology patent applications.
- Admittance to practice before the USPTO is required.
- Ph.D. or equivalent experience in a biotechnology-related field.
- Ability to travel when necessary (domestic and international).
KNOWLEDGE, SKILLS AND ABILITIES:
- Strong work ethic and demonstrated ability to manage a high-volume workload with minimal supervision.
- Excellent communication and interpersonal skills and the ability to work well within a team and interact with all levels of management.
- Strong academic credentials.