Associate Senior Counsel - IP (MA)
- Job Title
- Associate Senior Counsel - IP (MA)
Associate General Counsel – IP (MA)
Dynamic, pharmaceutical company located near Boston, Massachusetts, seeks an Associate General Counsel – IP. The salary is competitive. This role will require travel between two local offices.
The Associate Senior Counsel - IP functions partially independently, and provides legal advice and service on patent/intellectual property including patentability of products, discovery, and infringement of patents. This role is responsible for the preparation, filing, and prosecution of patent applications globally to obtain broadest possible protection for company products and ensures products are protected by valid patents and do not infringe valid third-party patents. This individual renders opinions regarding infringement and validity of patents and provides advice to protect company’s interest in scientific/technical publications and with collaborators and suppliers.
Key Roles and Responsibilities:
- Provides clear and informed legal advice and service on patent/intellectual property issues to assigned business clients, including patentability of inventions, freedom-to-operate, identifying IP risks, and potential infringement of patents.
- Proactively advises assigned business clients regarding opportunities to protect inventions and mitigate third party risks, including working with the business clients to create IP portfolios, advise on publication strategies and mitigate third party risks.
- With some guidance, manages the preparation, filing, and prosecution of patent applications to obtain strong protection for company products.
- Assists with the implementation of legal strategy and policies.
- Assists with the review of legal agreements and publications to identify and reduce IP risks.
- Serves as IP advisor and interface with legal department colleagues, regulatory department colleagues and others from companies and alliance partners on global issues as needed.
- Build and manage patent portfolios for projects by identifying inventions, developing patent and related business strategies; manage and supervise outside counsel in preparing, prosecuting, maintaining and defending patent filings for multiple projects, including both discovery and clinical projects.
- Provide legal opinions with respect to patentability, validity, and freedom-to-operate, and formulate patent strategies to obtain strong IP positions, ensure freedom-to-operate, and enable IP defense(s).
- Continue to develop and apply expertise in both U.S. and global patent law and practice.
- Analyze and advise on the intersection of patent and regulatory exclusivity for pharmaceutical and biologic projects.
- Participate as part of business development teams to provide IP advice regarding due diligence assessments and counsel based on these assessments, including patentability, validity, freedom-to-operate, and infringement analyses, and risk evaluation and mitigation.
- Provide IP support for transactional projects, such as research collaborations and various types of agreements, including advice on contract drafting and negotiation of IP related provisions.
- Perform timely review of publication requests.
- 7+ years as a practicing, licensed attorney with high-level client contact and responsibility, or 5+ years as an attorney with 3+ years relevant Patent Examiner or Patent Agent experience.
- Relative experience with both biology and chemistry; however, chemistry is preferred.
- J.D. degree and an active member of the bar in good standing (any US jurisdiction), as evidenced by a Certificate of Good Standing.
- Registered to practice before U.S. Patent and Trademark Office.
- Some level of legal experience counseling on issues related to the pharmaceutical industry.
- Experience with prosecution of chemical, biologic, antibody-drug conjugates and/or antisense oligonucleotides.
- Good understanding of the scientific and regulatory principles of the drug discovery and development process, including basic scientific literacy outside of own scientific discipline.
- Ability to learn quickly and in a fast-paced, matrixed environment.
- Strong organization and time management skills with ability to successfully prioritize and manage multiple, competing priorities simultaneously, in a fast-paced environment.
- Sound decision-making abilities, critical thinking skills, and excellent attention to detail.
- Ability to work both independently and collaboratively as part of a team, in a culturally diverse organization, and operate effectively in a global, cross-functional matrixed organization.
- Strong interpersonal skills and aim to develop leadership and managerial skills.
- Ability to command respect from management.
- Good level of oral and written communication skills, and able to effectively present ideas, counsel and information to others.
- Solid knowledge of pharmaceutical industry and ability to identify and propose solutions to relevant legal issues and risks.
- Good knowledge in a range of legal areas of relevance to the company’s operations.
- Well-developed research and critical thinking skills, and sound decision-making abilities, with attention to detail to produce consistently accurate work.
- Demonstrates the following key leadership competencies: Embraces and Sells the Vision, Leads Innovation and Change, Promotes Accountabilities, Drives for Results, Leverages Business Acumen, Focuses on Customers & Business Partners, Builds Organizational Talent.