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Energy Service Company

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Intellectual Property (ip) Attorney
Refer job# YEKW167460
Intellectual Property (IP) Attorney Duties: Prepare and prosecute patent applications for the Company, focusing on the pre-clinical and clinical method of use inventions (e.g., dosing, combination therapy, patient population, biomarkers). Identify patentable inventions through frequent interactions with project teams at all stages of R&D and identify inventorship. Provide advice to the Company concerning the patentability of its inventions and the advisability of filing patent applications covering those inventions. Manage outside IP counsel to achieve positive, practical outcomes for the Company's IP portfolio and obtain advice regarding related risks and opportunities, as needed. Manage and coordinate patent filings with licensors and collaborators. Prepare legal opinions and analyses of patents for freedom-to-operate. Conduct IP diligence and provide other IP support for business development opportunities. Conduct searches for competitive IP and, together with project teams and the corporate development team, help monitor, evaluate and collate the competitive IP landscape. Enhance the IP department's organizational infrastructure (e.g., docketing, filing). Facilitate scientific relationships with world-class academic and pharma collaborators through reviewing, drafting, negotiating, interpreting, and coordinating material transfer agreements and sponsored research agreements, with assistance from RevMed transactional law teammates. Advice on IP aspects of various agreements, including confidentiality agreements, consulting agreements, clinical collaboration agreements, and master service agreements. Review and advise on proposed Company scientific publications and corporate filings. Educate and advise the Company on intellectual property issues and best practices. Communicate with internal stakeholders to understand business needs and ensure IP protection aligns with those needs. Identify IP risks and communicate those risks to internal stakeholders for discussion and resolution.

Qualifications: J.D. degree from ABA-accredited law school and a member in good standing of the California Bar, or eligible for in-house registration in California. Admitted to practice before the U.S. Patent and Trademark Office. Ph.D. in Chemical Biology, Biology, Cancer Immunology, Pharmacology, or related biological science; or a Ph.D. in Chemistry with strong Biology experience. Law firm and/or in-house patent training. Should have 5 years of patent preparation and prosecution experience, including proven ability to translate pre-clinical and clinical biological and pharmacological findings into valuable patent applications. Experience negotiating and drafting agreements including consulting agreements, CDAs, MSAs, MTAs, SRAs, and license agreements is preferred. Possess excellent judgment, negotiation, and communication (verbal and written) skills; able to simplify the complex and adapt to audiences with varying levels of legal fluency. The ability to multi-task, prioritize options, anticipate challenges and execute on goals as a member of an interdisciplinary team is extremely important.
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