Patent Counsel, Biologics - Global Intellectual Property Counsel Jobs in Massachusetts - 162355 | Submit Resume | General Counsel Consulting
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Energy Service Company

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Pitts Pennsylvania United States

Responsibilities: The candidate must have a Juris Doctorate Degree, and be an active member of the Pennsylvania Bar with Experience in Court Litigation.  Excellent ability to draft, negotiate contracts, and agreements on behalf of the company and ...

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Patent Counsel, Biologics - Global Intellectual Property
Refer job# GRCX162355
Patent Counsel, Biologics - Global Intellectual Property Duties: Prepare, file and prosecute US, EPO and foreign patent applications in biotechnology areas. Interact with clients (including Research & Development, Project Management, Business Development, Franchise, Industrial Affairs) in the US and Europe on a daily basis to provide client counselling and proactively solicit invention disclosures. Proactively counsel clients about IP strategy related to client's business. Provide patentability evaluation of IP related to internal or external projects. Initiate, defend and manage post issuance proceedings such as post grant review, inter partes review, oppositions, litigation. Participate in the drafting, reviewing and negotiation of agreements covering intellectual property rights. Conduct, direct and analyze patent searches and render opinions on validity, non-infringement and patent avoidance of third-party patents. Review proposed research papers and other publications for any impact on existing patent estate. Develop and maintain an appropriate network inside Business Units and Global IP group.

Qualifications: Graduate degree (MS, PhD) in a biological or biochemistry science would be a plus. Registered US Patent Attorney. Member of at least one US State Bar for 5+ years. 5-8 years of patent law experience gained in-house and/or in a law firm. Experience handling complex biologics IP matters such as vaccines, antibodies, peptides, nucleic acids and/or gene therapy. Experience in handling US Inter Partes Reexaminations and EP Oppositions would be a plus. A motivated self-starting person exhibiting initiative to contribute to the team in more ways than mere handling of assigned projects. Able to independently handle preparation and prosecution of patent applications. Excellent communication skills and agility working with a team of global colleagues. Fluent in English, familiarity with French and/or German would be an asset.

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