Senior Intellectual Property Counsel The candidate will oversee work done by the intellectual property law practice group on licensing agreements, research collaboration agreements, and other types of agreements. Supervise and, when necessary, participate in the performance of intellectual property-related due diligence activities in connection with business transactions. Provide support for patent litigations and other intellectual property disputes. Advise the finance group on financial issues relating to intellectual property law matters, including royalty income and expense, and respond to auditors requests for information. Identify appropriate opportunities for our team to advocate on behalf of the company for changes in relevant intellectual property laws and regulations, e.g., through the filing of amicus briefs and submission of comments on proposed legislation and rulemaking. Manage external counsel relationships, including compliance with internal guidelines for fee arrangements, budgets, and billing. Develop strategies to protect the Company's intellectual property assets (including inventions, trade secrets, and trademarks) at all phases of the product life cycle. Implement and lead IP strategy for Program Teams, and establish positive working relationships with these teams by acting as their advisor on a variety of IP-related issues. Prepare and prosecute or oversee outside counsel in prosecuting worldwide patent applications, conduct patentability and freedom to operate assessments, and manage IP disputes. Lead IP due diligence, IP review, and IP agreement negotiation support for the firm's business development activities working collaboratively with external counsel and other business development colleagues. Develop and continually expand a thorough understanding of the Company's current and planned business activities, products, competitors, and markets, keep abreast of developing legal trends, laws, and regulations, and, based on this understanding, proactively develop strategies that serve the firm's business interests.
The candidate must have a BS in life sciences, including biology, chemistry, biochemistry, or another technical degree relevant to biotechnology. An advanced degree [MS/Ph.D.] is strongly preferred. Must have JD or equivalent and 7-10 years of the post-law school experience. Must be a registered Patent Attorney. Should have IP practice experience ideally in both a law firm and a biotech corporate setting. Should have a high level of communication, organizational and analytical skills. Should have the ability to work collaboratively with other Legal group members and with other functions (R&D, Commercial, Corporate Development) in the organization, and successfully manage outside counsel. Should have the ability to balance and prioritize multiple tasks, and to respond effectively to rapidly changing priorities and deadlines.
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