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Intellectual Property Counsel
Refer job# VYAH139064
 
Intellectual Property Counsel The candidate directly handle the following transactional responsibilities: Collaborating with R&D and business unit clients to timely identify all agreements necessary to implement their respective objectives. Advising R&D and business unit clients on IP contract issues and interpretation. Reviewing, negotiating, and drafting a broad range of contracts such as: Confidentiality agreements with universities, research organizations, commercial partners and private sector institutions to implement long-term strategic and commercial objectives for the subject IP; Material transfer agreements covering early-stage, proprietary chemistry and/or products; Service agreements; Consultant agreements; License agreements, including complex, cross-border in- and out-license agreements, cross-license agreements, development license agreements, and license and supply agreements; Technology transfer agreements; IP asset acquisition agreements; and IP asset divestiture agreements. Conducting IP due diligence for M&A transactions. Directly handle the following non-transactional responsibilities, with the global IP team and/or through management of outside counsel: Advising on patentability, validity, and infringement. Serving as senior IP advisor to your assigned R&D and business unit clients. Managing patent portfolios. Developing and implementing patent strategies to protect innovations. Conducting freedom-to-operate assessments. Effectively communicating with people at all levels of the Company, including complicated technical and legal issues to non-technical personnel, to enable critical decisions on IP and IP litigation matters. Working closely with other members of the IP, Legal and other functions, e.g., Tax, Insurance and HR, on regional and global levels. Providing IP litigation support, working in conjunction with company s US litigation attorneys and global IP team. Conducting and/or coordinating IP training, working in conjunction with company s US commercial attorneys and global IP teams. Employing deft social skills to mediate between, and balance, occasional competing R&D and business unit interests

A JD degree and a license to practice law in at least one US state is required. Must be Registered In-House Counsel, as defined in and required by the Rules of the State Bar of California (or willing and able to satisfy CA State Bar requirements to become a Registered In-House Counsel). Admission to practice before the USPTO is required. Should have 8 years of IP practice Preferred: Bachelor s degree in biology, chemistry, biological materials, or engineering. In-house counsel experience. Experience in the fields of biology, chemistry, biological materials, bioscience research or engineering.
 
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