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Patent Attorney - Corporate Counsel
Refer job# MYUR143915
 
Patent Attorney - Corporate Counsel The candidate will provide duties include: Create value for firm by identifying and protecting intellectual property: working with our scientists, draft and prosecute patent applications, manage a global patent portfolio and continuously develop IP strategy for research and development in biotechnology. Work with outside patent counsel as necessary to support the patent portfolio, for example, by obtaining legal advice or preparing, filing, and prosecuting administrative actions. Protect R&D investments by identifying and monitoring relevant third party patents, evaluating and advising on the risk to the business, determining and implementing appropriate actions to ensure freedom to operate (e.g. third party observations, oppositions, IPRs, litigation, licensing, including cross-licensing strategies). Work with legal management to support internal clients from research to commercial and business development by providing patent legal analysis and advice incorporating good business understanding. Anticipate and proactively support the prevention and management of legal risks facing the company, such as patent revocation or expiry. Support the Chief Counsel Patents and US General Counsel in patent litigation efforts including working with or managing activities of external legal counsel on patent actions. Work with external innovation and business development colleagues to identify opportunities and draft and negotiate agreements with external parties. Perform due diligence on proposed business transactions. Conduct or coordinate research on current legal issues. Educate the patent team, the legal department and internal clients businesses on sound legal practices and new developments impacting the business. Review business, scientific, commercial, and sales/marketing documents/communications and publications and advise on appropriate strategy/language to manage risk while maximizing business benefit.

The candidate must have bachelor's degree in the pharmaceutical, chemical or biochemical sciences from an accredited institution. Must have U.S. Law Degree (Juris Doctorate (JD) from an accredited law school). Must be admitted to practice in front of the USPTO (USPTO bar admission) and admitted to at least one state bar. Must have 5-10+ years relevant experience in biotechnological patent practice, including drafting, filing and prosecution of patent applications in the relevant field in local and foreign jurisdictions, due diligence, business development support, and advising senior management. Must have advanced degree in a biochemistry related field. Should have experience in drafting and filing IPR (or PGR) petitions and participation in discovery and oral proceedings before the USPTO and U.S. Patent Office Patent and Trial Appeal Board. Excellent interpersonal, negotiating, and communication skills are plus. Excellent writing skills are an asset. Should have excellent analytical and problem-solving skills with the ability to identify and address issues beyond those rose. Should have excellent client management skills and the ability to deal confidently with the client and legal function colleagues.
 
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