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Counsel Jobs > Director, Intellectual Property Counsel Job in California > Director, Intellectual Property Counsel

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Director, Intellectual Property Counsel

Refer job# ABYE148808

Director, Intellectual Property Counsel Duties: (i) Managing intellectual property (IP ) portfolio to maximize the protection and value of IP estate, (ii) managing IP legal budget and outside IP law firm relationships, (iii) proactively working with R&D team to identify opportunities for new IP creation relative to pipeline, and to file and prosecute patent applications as required, (iv) providing IP and other due diligence support in the companys business development, financing and strategic activities, and (v) managing and providing legal business partner support of R&D team, including providing general legal guidance and key transaction support for R&D team. Manage the companys patent portfolio and patent prosecution, including: (i) draft in-house and oversee outside firm drafting and filing of US provisional applications with USPTO for the companys and partnered discovery programs, (ii) prepare, have executed and file ancillary patent documents, including oaths/declarations, assignments, etc. and assemble references for Information Disclosure Statements, (iii) update and coordinate filing of US utility and non-US patent applications with outside counsel, (iv) prosecute and oversee prosecution of US and non-US patent applications, including assisting in preparation of amendments and other correspondences, (v) conduct weekly searches in computer-readable databases for recently issued patents and published patent applications via structure, substructure and key word searches, (vi) maintain docket and approve patent annuities, and (vii) manage docket within allocated budget. Manage and oversee the companys trademark prosecution and trade secret protection activities, including: (i) overseeing the companys trademark docket, (ii) assisting in naming of Company proprietary investigational drugs, (iii) conducting and overseeing global trademark searches, (iv) coordinating filing, prosecution and maintenance of trademark applications with outside counsel, and (v) establishing and maintaining policies and procedures to protect Company trade secrets. Provide IP support in: (i) key R&D transactional matters (drafting/negotiation of confidential disclosure agreements, material transfer agreements, sponsored research agreements, development agreements, supply agreements and work orders), (ii) business development/licensing matters (preparation of executive summaries and tables of relevant intellectual property, populating virtual data rooms with relevant file histories and documents, managing discussions and negotiations regarding IP due diligence, reviewing and advising on intellectual property provisions in strategic collaboration and license agreements, reviewing intellectual property sections non-confidential and confidential third-party slide decks, conducting freedom-to-operate searches and analyzing patentability of IP assets, preparing summaries and reports for executive and business development management pertaining to IP matters, coordinating and managing discussions with third-parties related to IP due diligence), (iii) financing activities (lead IP due diligence activities in connection with company fund raising activities, populating virtual data rooms with relevant file histories and documents, coordinating/managing calls with underwriters counsel related to intellectual property due diligence, coordinating with outside counsel regarding preparation of IP opinions), and (iv) various regulatory compliance activities (reviewing and updating company SEC disclosures related to intellectual property and related risk factors in 10K and 10Q filings). IP Counsel will provide general, IP and supervisory legal support, including: (i) acting as primary liaison with the companys collaboration partners related to intellectual property matters, (ii) attending core research and development team meetings to assist in identifying inventions and to provide general IP guidance and advice in connection with such meetings, (iii) updating corporate intellectual property policies and procedures, as appropriate, and (iv) overseeing and supervising paralegal(s) regarding R&D team legal and IP activities. Requirements: Advanced degree in chemistry or biology preferred. Member of California State Bar in good standing. Registered to practice before the United States Patent & Trademark Office. 15+ years of experience at a pharmaceutical company, a biotechnology company and/or a law firm specializing in life sciences intellectual property/patent prosecution matters. Excellent written and verbal communication skills. Strategic thinker with strong operational capabilities to develop and drive the companys IP strategy coupled with appropriate sensitivity to executing against companys operational goals. Strong team player with ability to work with diverse internal and external constituencies and personnel at various levels of seniority, including staff, managers, executives and external partners. Effective time management and project management skills with proven ability to multitask; organized and strong attention to detail. Proficiency in Microsoft Office Suite (Word, PowerPoint, Outlook, and Excel) and ChemDraw.

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