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Senior Counsel - Intellectual Property
Refer job# BGNB141321
 
Senior Counsel - Intellectual Property Duties: Responsible for setting and driving the global Intellectual Property strategy throughout one or more defined business sectors in company. Working primarily within the company s Life Sciences group of businesses. Will be responsible for all aspects of IP, from idea generation through patent filing, prosecution, trade secrets, freedom-to-operate, due diligence, agreement drafting, licensing and enforcement. Works with business leaders to set and implement appropriate IP strategies to achieve business objectives. Works closely with R&D to ensure that sufficient ideas and invention disclosures are generated. Ensures that patent filings are of high quality on commercially significant inventions by working with R&D, business managers and marketing. Drafts and negotiates IP-related agreements. Ensures freedom to operate and minimizes exposure to third party IP, including providing and drafting opinions. Supervises preparation and prosecution of patent applications to ensure that meaningful protection is obtained at low cost. Manages IP litigation for defined business areas with Chief IP Litigator for the company, while keeping the business informed of ongoing and projected costs. Provides IP advice on major transactions and acquisitions, including due diligence activities. Works with Business Development team to secure revenue through out-licensing where appropriate. Supervises and/or guides work on oppositions proceedings. Responsible for IP portfolio and budget.

Requirements: Qualified USPTO- registered Patent Attorney and member of the state bar, with in the region of 7 years of post-qualification experience. Technical background in chemistry and biology. Excellent written and oral communication skills. Solid leadership skills. Experience of devising innovative IP strategies. Good commercial awareness and ability to manage a budget. Desired Characteristics: IP attorney experience working in the therapeutic or diagnostic pharmaceuticals sector. Whilst expertise to advise on IP matters in the biology and chemistry fields is essential, experience and desire to work additionally in product areas pertaining to hardware and/or software fields would be desirable. Experience working in a corporate IP environment (although applicants from private practice will be welcome).
 
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