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Melinda Burrows
Deputy General Counsel
- Litigation and
Compliance, Progress
Energy Service Company
LLC

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Counsel Jobs > Corporate Counsel, IP Job in Pennsylvania > Corporate Counsel, IP

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Corporate Counsel, IP

Refer job# SSAN150409

Corporate Counsel, IP Duties: Manage, protect and expand the Company's patent portfolio, including proactively identifying and developing patentable intellectual property and working closely with internal clients and/or outside counsel to prepare, file and prosecute related patent applications. Counsel internal clients, including management and members of the R&D, technical operations and corporate development teams, on IP risks and opportunities. Review and assist in the drafting and/or negotiation of nondisclosure, research, license and other agreements involving the use, transfer, or ownership of intellectual property. Assess and advise on IP risks and opportunities in complex transactions. Work with the scientific staff to seek IP protection for clinical and later stage developments that may extend the exclusivity period for company products. Provide IP due diligence support for corporate development activities and manage patentability, freedom-to-operate, infringement, validity and regulatory exclusivity analyses. Provide support for adversarial proceedings involving company technology or products, including IP litigation, European oppositions, and/or U.S. post-grant proceedings. Develop a deep knowledge of the Company's existing and planned research and development programs, business activities, and product candidates in the context of competitor activities, industry trends, best practices, laws and regulations affecting IP. Train internal client groups to promote awareness of IP and its implications on various functions within the organization. Qualifications: A JD Degree from an accredited law school. Admission to practice before a state Bar. Admission to practice before the U.S. Patent and Trademark Office. An undergraduate degree in chemistry, biochemistry, or other pharmaceutical-related science required, advanced degree strongly preferred. 10+ years relevant professional experience in a law firm and/or in-house setting, with experience in the pharmaceutical, life science and/or biotechnology industry highly preferred. Significant small and/or large molecule patent preparation and prosecution experience, including familiarity with both U.S. and ex-U.S. IP rules, regulations and practices. Knowledge of pharmaceutical life cycle management and role of IP strategy in life cycle management. Ability to approach IP creation and protection with a strategic mindset by anticipating future business, competitive and legal risks and opportunities and offering creative solutions. Experience in drafting and negotiating IP terms in business transactions required. Experience with collaborations, consortia and license agreements is strongly preferred. Strong business acumen and ability to creatively resolve business issues. Ability to manage outside counsel and other external resources for quality work product, value and efficiency. Ability to communicate effectively, both orally and in writing, including the ability to explain complex issues clearly and effectively to both scientists and non-scientists. Flexibility, willingness, and ability to take on diverse tasks. Ability to facilitate and contribute to collaborative decision-making processes and work effectively on cross-functional teams.

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