IP/Intellectual Property Counsel The candidate will identify patentable inventions, drafting patent applications, work together with outside counsel on patent filing, prosecution and patent portfolio matters and collaborate with R&D on inventions and freedom to operate. Will conduct patent and prior art search, competitive landscape analysis, patentability and freedom to operate analysis. Draft IP provisions of contract templates, as well as review and negotiate IP clauses in relevant contracts. Support business development and research collaborations, including due diligence assessments, on contract drafting and negotiation, and alliance management of existing collaborations. Monitor patent trends and case law developments in major markets, and adjust IP strategies accordingly; and advocate positions important to in matters concerning IP government and regulatory policy. Review draft publications and presentations. Provide litigation support, including validity and non-infringement analysis. Manage trademark matters.
The candidate should have 5 years of relevant experience in pharmaceutical patent practice. Must have an Advanced degree in molecular biology, immunology, or other biological sciences required. Juris Doctor from an accredited U.S. law school is required. Must be Admitted to USPTO and at least one State Bar. A deep understanding of global pharmaceutical patent laws, regulatory data protection laws, regulations, and best practices, in the U.S., China, and Europe is needed. Experience in the pharmaceutical industry and a strong understanding of pharmaceutical R&D drug development and commercialization are required. Must have excellent drafting, negotiation, and communication skills, with the ability and confidence to represent *** in the area of patent law. Prior experience managing projects is strongly preferred. In-depth knowledge and experience in counseling drug discovery and development and commercial launch are needed. Must have a proven track record of patent portfolio development. Should have experience and skill at drafting patent applications and responses to patent office actions.
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