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Reporting to the SVP, Chief Intellectual Property Counsel, the Patent Counsel, Intellectual Property will be responsible for managing intellectual property matters critical for the Company’s success, including litigation, licensing and other complex business transactions, patent drafting, prosecution and enforcement, publication review, due diligence and opinion work, and other strategic IP initiatives. The Patent Counsel, Intellectual Property will provide counsel to senior business leaders and be an integral business partner to the Company’s research and development organization, strategic business units, and corporate counsel. The Patent Counsel, Intellectual Property will also be responsible for managing relationships with outside counsel.
Responsibilities will include, but are not limited to, the following:
Develop and execute global patent strategies for commercial products, pre- and post-POC development candidates, and internal and/or in-licensed research programs
Prepare and prosecute patent applications, including supervision of outside counsel
Monitor and analyze competitive intellectual property positions; independently carry out patentability, inventorship, and freedom-to-operate analyses and render opinions
Direct outside counsel in opinion work and adversarial proceedings including European oppositions, post-grant proceedings, and/or IP litigation, in consultation with SVP, Chief IP Counsel
Actively participate on cross-functional project teams and advise internal clients regarding IP issues and strategic decisions
Collaborate with global and local Regulatory and Commercial colleagues to maximize product exclusivity and ensure compliance with patent listing regulations
Lead and conduct IP due diligence activities in support of business transactions
Review and assist in negotiating IP provisions of agreements, including license agreements and collaboration agreements
Review IP aspects of publications
Conduct internal IP training programs to increases IP understanding and awareness
Demonstrate commitment to high moral standards and business ethics
Education / Certifications:
J.D. from an accredited U.S. law school and admission to at least one state bar
Registered before the U.S. Patent and Trademark Office
M.S. or Ph.D. degree in organic chemistry, biochemistry, molecular biology, or similar life sciences technical disciplines, or equivalent pharmaceutical industry research experience (must be comfortable with small molecule)
Experience:
6+ years post-law school patent law experience, preferably related to pharmaceuticals; experience in-house or directly from a law firm
Broad knowledge of global patent law and procedure; experience with patent litigation and administrative patent Key Technical Competencies Required
Ability to approach IP creation and protection with a strategic mindset by anticipating future business, competitive, and legal risks and opportunities and offering creative solutions
Strong advocacy and negotiating skills, including experience in drafting and negotiating IP terms in business transactions
Demonstrated ability to collaborate effectively with people from diverse technical and cultural backgrounds
Exceptional interpersonal skills and the ability to communicate effectively with senior business leaders and other colleagues at all levels of the organization
Ability to balance and prioritize multiple tasks, and to respond effectively to rapidly changing priorities and deadlines
Location:
Cambridge, MA, Hybrid – 3 days a week in office
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