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Intellectual Property Attorney, Vice President
Refer job# ULKK140652
Intellectual Property Attorney, Vice President The candidate will be primarily responsible for assisting the business team in negotiating and drafting IP agreements and licenses, performing freedom to operate searches and analysis, and preparing and prosecuting of patent applications. Will be working across the R&D and commercial organizations within firm, to independently assess needs, goals and risks; then advise, counsel, and implement processes for the efficient commercial exploitation, strategic development and protection of firm s intellectual property assets. Perform patentability and freedom to operate searches, provide opinions regarding validity, infringement, enforceability and freedom to operate related to third party patents. Assist and advise the business and legal teams in structure, negotiation and drafting of licenses and other complex IP agreements. Help prepare and prosecute patent applications (U.S. and foreign). In cooperation with the General Counsel, direct, manage and optimize work with outside counsel related to IP matters. Design, Implement and manage training and education programs on various areas of intellectual property law, such as patent law basics and protection of confidential information and trade secrets. Work closely with scientists to identify patentable subject matter. Identify scientific and technical issues that could impact future patent and commercial opportunities. Review proposed publications in advance of disclosure to identify patentable subject matter.

The candidate should have a JD degree and admission to a State Bar, and ability to practice in CA. Must have a Master degree or a Ph.D. degree in biological sciences such as molecular biology or cell biology. Licensed patent attorney with 10+ years of experience in patent prosecution, IP strategy/management, and support for complex commercial transactions pertaining to IP issues is essential. Must preferably have a mix of AMLaw100 training and experience in the field of (industrial) biotechnology. Proficiency in performing searches of CAS databases is a plus. Excellent written and oral communication skills essential. Excellent written and verbal skills.
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