Description:
As the Chief Intellectual Property Counsel at A Biotechnology Company, you will play a leadership role in the company as a key member of the legal team. The Chief IP Counsel will shape and protect the company's intellectual property assets and will develop and implement a comprehensive intellectual property strategy, including patent, trademark, and trade secret protection, aligned with the company's business objectives with a forward-looking, strategic view. You will collaborate with and counsel internal clients to support achievement of strategic objectives, including IP portfolio development, patent interpretation and validity/freedom-to-operate studies, prior art searches and patentability, infringement by third parties, commercial launch strategies, competitive patent portfolio analysis, patent disputes, trademark protection, and trade secret protection. In overseeing the creation, maintenance, and enforcement of the company's patent portfolio, you will work closely with inventors, scientists, other members of the company, and external counsel to ensure timely and effective filings. This role reports to the Chief Legal Officer and works in partnership with other senior leaders to design, develop and drive implementation of IP strategy aligned with A Biotechnology Company's strategic goals. You will:- Participate in the development and implementation of policies and procedures by the Legal Department, particularly as they relate to areas of compliance and risk related to intellectual property. Develop and manage the IP budget, including identifying the correct use and allocation of internal and external resources (e.g., identifying, selecting, and managing external counsel).
- Manage the execution and strategy for all contentious matters related to intellectual property, including patent litigation, infringement claims, and post-grant review proceedings by collaborating with the business and external counsel and representing the company's interests in these proceedings.
- Collaborate with and counsel internal clients in regulatory, including on regulatory filings (e.g., INDs, CTAs, and BLAs), communications, and materials, and support achievement of strategic objectives.
- Collaborate with and counsel internal clients on scientific publications, medical communications, and patient advocacy materials and participate in the development and review of scientific and medical presentations and patient advocacy focused materials.
- Partner with transactional and business development teams in the drafting, review, and negotiation of agreements involving technology and IP, including license agreements, JDAs, MTAs, SRAs, NDAs, consulting agreements, IP acquisition and divestiture agreements, manufacturing, supply chain, device, and other transactional matters as needed.
- Work closely with scientific, technical operations, and devices teams as well as other members of the company as needed to evaluate, support and protect the developments in research, development, and new technologies.
- Provide guidance or lend expertise to other members of Legal Department on legal issues.
- Provide and articulate clear, pragmatic and actionable legal guidance and risk assessment across the business in areas involving scientific, technical, and intellectual property issues.
Requirements:
- Technical undergraduate degree, preferably in the biological or chemical science fields, as well as a Masters or Ph.D. technical degree.
- JD degree and admission in good standing to a bar in at least one state. Admitted to practice before the U.S. Patent and Trademark Office.
- Minimum 15-20 years of experience practicing intellectual property law in the biotechnology or pharmaceutical industry with experience with biological products, including commercial products and preparing late-stage clinical assets for commercial launch.
- Extensive knowledge of patent law, patent prosecution, and IP litigation, with a successful track record of managing complex IP matters.
- Significant IP contentious matter experience, preferably globally, including post-grant review proceedings and litigation.
- Bring a patient-focused, humble, and collaborative leadership style with experience managing teams, working within larger teams, developing talent, and fostering a high performing and inclusive work environment.
- Excellent communication, negotiation, and analytical skills, with the ability to provide strategic legal advice and influence key stakeholders, including synthesizing and presenting complex issues. Strong problem solving and conflict resolution skills; able to think strategically and systematically and to deal with complexity and ambiguity.
- Proven ability to balance legal and business considerations, prioritize tasks, and deliver results under pressure in a fast-paced environment.
