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Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Senior Counsel, Intellectual Property Job in Massachusetts > Senior Counsel, Intellectual Property

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YOUR WINDOW TO A WORLD OF OPPORTUNITIES

Senior Counsel, Intellectual Property

Refer job# KIFK140004

Senior Counsel, Intellectual Property The candidate will help to manage and develop worldwide patent portfolio for all of company s North American subsidiary companies, including Sunovion Pharmaceuticals, Tolero Pharmaceuticals and Boston Biomedical, through in-house drafting of patent applications and responses to worldwide PTO correspondence and efficient management of outside counsel. Work closely with R&D teams to identify and protect new intellectual property, and counsel and educate scientists and product development teams on intellectual property matters. Reviewing abstracts, manuscripts, posters and other information intended for public disclosure for possible IP concerns. Review and analyze third party intellectual property to ensure patentability and freedom to operate, identify any potential issues and advise project teams. Support business development activities with active participation on global due diligence teams. Work collaboratively with internal stakeholders, and internal and external counsel to proactively support products and business goals. Manage trademark portfolio. Review and negotiate IP provisions in R&D and various other contracts. The candidate should have J.D. 3 - 5 Years of experience is required. Should have 3-7 years patent experience with emphasis on pharmaceuticals. Registered to practice before the U.S. Patent and Trademark Office required. Must have Juris Doctorate from an accredited law school and member of at least one U.S. state bar (Massachusetts preferred). Should have advanced degree in chemistry or substantial experience in the pharmaceutical field. Ph.D. in organic chemistry preferred. Should have ability to work both independently and in a team environment with people at different levels within the company. This is an extremely interactive role that requires excellent communication skills, the ability to identify innovations, and succinctly identify and communicate decisions to a team. Must have demonstrated experience in drafting and prosecuting pharmaceutical patent applications in the U.S. and other countries, as well as conducting freedom to operate and patent invalidity and non-infringement analyses. Should have excellent organizational skills, attention to detail and ability to handle and prioritize multiple time sensitive projects. Must have strong written and verbal communication skills, and demonstrated ability to work collaboratively with scientists to identify and protect new inventions. Exposure to litigation, the Hatch-Waxman Act including ANDA approvals, FDA forms for Orange Book listing, and patent term extension is required.

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