The Director, Patent Counsel supports PTC's global Intellectual Property (IP) legal needs. Working under the supervision and direction of the in-house, senior IP counsel and in close partnership and collaboration with PTC's research organization and with the internal IP legal team, the role is responsible for the preparation and prosecution of patent applications to support PTC's Research and Development (R&D) goals.
The incumbent works cross-functionally with internal departments and external resources on IP-related issues.
The role ensures adherence to relevant regulatory requirements and company Standard Operating Procedures (SOPs) as appropriate.
- Prepares and prosecutes patent applications as needed to support PTC's R&D goals. May also file trademark applications to support PTC's Commercial and Marketing goals.
- Interacts cross-functionally to gather and analyze information necessary to prepare patent applications or trademark applications.
- May attend internal meetings with key stakeholders to obtain subject matter background.
- Provides direction and support to patent agent or senior IP counsel to ensure patentability requirements for applications drafted are met and aligned with the strategic timing of filing goals.
- Contributes expertise to R&D and IP team discussions to develop and execute strategy(ies) for patent preparation and filing efforts.
- Reviews examination communications from US and ex-US patent offices.
- Consults with IP team personnel as needed to provide instructions to external IP counsel regarding potential responses. Reviews draft responses provided by external IP counsel and provides direction or instructions as appropriate.
- Performs additional duties as requested or required.
- JD degree and a minimum of 8 years of progressively responsible, related legal experience at least 3 of which include patent preparation and prosecution (in-house or at a law firm) for pharmaceutical, biotechnology or related environments. Position also requires a Bachelor's degree in a relevant scientific discipline.
- Admission to at least one state bar.
- Registered to practice before the United States Patent Office.
- Demonstrated experience preparing, filing and prosecuting patent applications.
- Familiarity with trademark principles.
- High degree of integrity and ability to handle confidential information with discretion.
- Strong attention to detail and the ability to adhere to strict deadlines and guidelines.
- Reliable self-starter with the ability to influence without direct authority.
- Demonstrated proficiency using the advanced functionality of Microsoft Office (PowerPoint, Excel and Word).
- Excellent verbal and written communication and skills.
- Ability to work independently and collaboratively, as required, in a fast-paced, matrixed, team environment consisting of internal and external team members.
- Analytical thinker with excellent problem-solving skills and the ability to adapt to changing priorities and deadlines.
- Excellent planning, organization and time management skills including the ability to support and prioritize multiple projects.
Special knowledge or skills and/or licenses or certificates preferred.
- 1-2 years of experience in a drug discovery role within a pharmaceutical, biotechnology or related environment.
- Hands-on, laboratory-based scientific experience.
- Experience filing patent applications with the USPTO or related entity.
- Experience with SharePoint, ChemDraw, EFS Web and/or Adobe.
- Travel requirements 0-10%