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Senior Corporate Counsel, Patents
Refer job# AYZD161399
 
Senior Corporate Counsel, Patents Duties: Coordinates with outside counsel on preparation and prosecution of patent applications related to the company's small molecule chemistry portfolio (both in-licensed and through internal research activities) and works with scientists to obtain necessary information and data. Conducts freedom to operate and patentability searches using patent and scientific literature and databases. Assists patent counsel in preparation of freedom to operate and patentability opinions. Provides advice and service on patent/intellectual property matters including patentability of inventions, etc. Coordinates with outside counsel in the preparation, filing, and prosecution of patent applications to obtain broadest possible protection for company's inventions. Ensures all commercially important inventions are protected by valid patents and do not infringe valid third-party patents. May handle appeal and opposition proceedings. May assist in negotiation and drafting of material transfer agreements, research agreements, patent licenses and other agreements. Conducts and evaluates state-of-the-art searches. Assists in training scientists in electronic notebook maintenance and invention disclosure procedures. May attend internal scientific meetings and meet with scientists for periodic updates. May also help paralegal staff to maintain the company's database of publications, patents and patent applications. Leads or manages the work of others by providing guidance to subordinates or teams based on organizational goals and company policy, with responsibility for results including cost, methods and staffing. Complies with company health and safety policies and procedures. Manages patent paralegal, including hiring, scheduling and assigning work, reviewing performance, and recommends salary increases, promotions, transfers, demotions, or terminations.

Qualifications: JD Degree, MS/MA degree in synthetic chemistry, medicinal chemistry, or related discipline and 5-7 years of related experience; or, JD Degree, PhD degree or degree in synthetic chemistry, medicinal chemistry, or related discipline and 3-5 years of related experience; or, Equivalent combination of education and experience. Advanced degree in chemistry, medicinal chemistry or related discipline required. Admission to practice before the US Patent and Trademark Office Experience: Experience in Biotech/Pharmaceutical industry or in a law firm prosecuting patents is required. Has extensive experience in relevant industry/profession and area of specialization. Knowledge/Skills: Performs a variety of complicated tasks with a wide degree of creativity and latitude. Has complete understanding and wide application of technical principles, theories, concepts and techniques. Has good general knowledge of other related disciplines. Applies strong analytical and business communication skills. Uses professional concepts and company objectives to resolve complex issues in creative and effective ways. Identifies and implements methods and procedures to achieve results. Works on complex problems where analysis of situations or data requires an in-depth evaluation of various factors. Exercises judgment within broadly defined practices and policies in selecting methods, techniques and evaluation of criteria for obtaining results. Networks with key contacts outside own area of expertise.
 
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