Senior Corporate Patent Counsel
The candidate will take care of issues related to the drafting, filing, maintenance, defense and acquisition of Intellectual Property (IP) rights. Will analyze, describe and present complex IP situation to clients in a clear understandable and convincing manner. Prepare guidance to the different units within the company or collaboration partners related to Freedom to-Operate (FTO) and commercialization. Be part of the interface for company representing the US IP department. Provide strong advice on IP issues related to agreements of all kind external communication on a very high level as primary contact to patent offices, courts and law firms. Develop/Adapt and improve a patent strategy to support FTO for company's projects. Act as a member of a site specific local research and development teams. Participate in domestic and/or international contract and business development negotiations. Handle the IP portfolio with regard to licensing, enforcement and maintenance. Assist to manage an interdisciplinary team in litigations and other IP related disputes. Manage a team of paralegals with regard to filing requirements and other formal patent duties often guided by strict deadlines. Manage interdisciplinary projects and main interface with research and development, legal, business development, regulatory affairs.
The candidate should have a university degree in organic chemistry, biology, medicinal chemistry and/or biotechnology. Should have a Ph.D. in organic chemistry, biology, medicinal chemistry or biotechnology. Must have a US patent attorney, European patent attorney or similar qualification. Must have 5+ years of professional experience in the IP business. Should have high knowledge in IP Legal regulations and rules including case law in the US. Must have sound understanding of patent legislation and relevant case law with special emphasis on US Patent Law. Should have solid professional skills in leading a patent department or a patent group in a law firm as well as in managing and handling a complex IP portfolio. Must have professional experience in drafting of patent applications, prosecuting, enforcing those and filing procedures including in-house management of a IP portfolio with more than 50 patent families. Should have knowledge of European patent law and the regulations in other jurisdictions. Must have professional experience in an international environment. Should be fluent in English and preferably one other language (preferably German).
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