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Intellectual Property Counsel
Refer job# OOSG168372
Intellectual Property Counsel Duties: Supports Senior Intellectual Property Counsel to define and execute on agreed IP strategy for dedicated areas, aligned with Business Unit Strategy or R&D program strategy. Supports or manages assessment of IP portfolios, considerations of competitors IP portfolios, and development of IP strategies. Drives product-development teams in an IP-minded way to create business advantage. Leads, supervises and/or coordinates competitive IP-intelligence projects for area(s) of responsibility. Decides on and executes strategic patent filing and prosecution within area(s) of responsibility. Reviews invention disclosures, prepares patentability analysis and decides on drafting patent applications for first filing in relevant jurisdictions. Decides on and instructs outside counsel on drafting, filing and prosecution of patents in all global jurisdictions. Conducts, directs or instructs on re-exam/opposition/opinion/post-grant proceedings in relevant jurisdictions. Negotiates and reviews CDAs and MTAs for area(s) of responsibility. Supports Senior Intellectual Property Counsel for IP license agreements, R&D agreements and other IP-related agreements and transactions. Delivers necessary IP training to technology teams or project teams as required in area(s) of responsibility. Provides Freedom-to-Operate (FTO) analysis and counseling. Suggests course of action, including providing relevant risk assessment and risk mitigation in collaboration with Senior Intellectual Property Counsel. Prepares and conducts annual global IP portfolio review in area(s) of responsibility in collaboration with the Senior Intellectual Property Counsel. Reviews publications (advertising material, scientific articles, presentations or posters, etc.) within area(s) of responsibility. Provides relevant support for IP litigation, enforcement or defense activities to Senior Intellectual Property Counsel or Head of IP.

Qualifications: Registered USPTO Patent Attorney; Juris Doctor. Should have 3 years of patent drafting, filing, and prosecution experience required, in a law firm or in-house with biotech experience. Substantial patent searching experience with direct experience drafting non-infringement and invalidity opinions. Proactive, problem-solving, independent and autonomous, self-motivating personality. Proficiency in written and oral communication in English. Excellent communication skills are required. Excellent in prioritizing work, coordinating diverse and complex activities, capable of multitasking, and functioning well under pressure. Proven ability to work well with diverse personalities in a team and cross-functionally.

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