Senior Intellectual Property (IP) Counsel Counsel Jobs in California - 144876 | Submit Resume | General Counsel Consulting
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Senior Intellectual Property (IP) Counsel
Refer job# NGGG144876
 
Senior Intellectual Property (IP) Counsel The candidate will be responsible for Management, protection and expansion of the Companys patent portfolio, including working closely with internal clients and outside counsel to proactively identify and develop patentable intellectual property to strengthen and protect the companys IP assets and to prepare, file and prosecute related patent applications. Counseling of internal clients, including other members of the Legal Department and senior management, on intellectual property risks and opportunities and support for patentability, freedom-to-operate, infringement, validity and regulatory exclusivity analyses. Advise Corporate Development Department on M&A and licensing activities as needed, including conducting robust IP due diligence, preparing resulting analyses and providing meaningful input into relevant portions of transactional documents and negotiations. Management and protection of the Companys trademark portfolio, including working closely with internal clients and outside counsel to prosecute current applications, secure new trademarks, and police existing trademarks. Advise on adversarial proceedings involving our products, product candidates, and platform technologies, including IP litigation, European Oppositions and US inter partes reviews and similar matters. Train internal client groups, who develop IP, on the importance of IP to the success of the company and how they can contribute to enhancing the breadth and strength of our IP portfolio by communicating and coordinating effectively with the IP team.

The candidate must have JD degree, with 10+ years relevant professional experience in a law firm and/or in-house setting, working solely or primarily in the pharmaceutical, life science and/or biotechnology industry. Significant patent preparation and prosecution experience, including significant non-U.S. experience, and familiarity with both U.S. and non-U.S. IP rules, regulations and practices is necessary. Track record of leading projects to successful completion is mandatory. Experience supervising people in a positive and motivating manner, with a demonstrated commitment to the professional development of direct reports is needed. Admitted to practice before a state Bar is preferred. Admitted to practice before the U.S. Patent and Trademark Office is beneficial. An advanced degree in a biological science, biochemistry, chemistry, or other field relevant to pharmaceuticals, life sciences or biotechnology is an asset. Trademark experience is desired.
 
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