Description:
Are you someone who has a passion for advancing and protecting the company's innovation and portfolio strategy? If so, this role may be for you!The Location: Taconic Biosciences is seeking an Intellectual Property Counsel to support our Legal team. This is a primarily at home/remote role but will have ad hoc needs to come onsite (5-10%).
The Pay Range: $170,000k - $185,000k annual salary. Exact compensation may vary based on several factors. These factors include geographic location, experience, training, education, and local market conditions and could exceed the advertised salary range.
The Schedule: Monday - Friday, core business hours, but may require flexibility.
What we offer:
- Insurance within 30 days or less which includes options for medical, dental, vision, pet insurance and more!
- 20 days paid time off plus 6 additional holidays and 1 floating holiday
- Work life balance
- 401(k) plan with up to 4% employer match
- Tuition reimbursement
- Career advancement opportunities
- Commitment to training and providing you with the skills you need for success
- All employees receive access to 24/7 telemedicine (including mental health), short- and long-term disability and life insurance
The Role:
The Intellectual Property Counsel plays a central role in advancing and protecting the company's innovation and portfolio strategy. The ideal candidate will play a key role in managing and negotiating intellectual property (IP) licensing, conducting freedom-to-operate (FTO) analyses, and, when needed, supporting trademark and patent preparation and filings. Legal expertise, business judgment, and a strong understanding of intellectual property are essential to support the company's strategic direction and long-term growth objectives.
Core Responsibilities:
- Drafts, negotiates, and manages license and partnership agreements with third parties for products and/or technology.
- Performs, coordinates, and advises on FTO analyses to assess third-party patent risks for new products and services.
- Performs legal research and document review; drafts, develops, and reviews legal documents (e.g., confidentiality and non-disclosure agreements, strategic partnership agreements, material transfer agreements).
- Leads and supports filing and prosecution of provisional and utility patent applications to advance and strengthen the company's IP portfolio (as needed).
- Advises internal stakeholders on IP risks, business strategy and negotiation tactics related to technology partnerships and collaborations.
- Oversees outside counsel for matters relating to intellectual property activities.
- Supports M&A due diligence related to intellectual property and licensing matters.
- Interprets guidelines, laws, and regulations to support the business as requested.
Education and Experience:
- Juris Doctor (JD) degree from an accredited law school; admission to at least one U.S. state bar.
- Registration to practice before the U.S. Patent and Trademark Office (USPTO).
- Experience in life sciences or related scientific/technical field.
- 5+ years of experience in IP law, including FTO analyses, patentability assessments, trademark, copyright and prosecution of patent applications (provisional and utility).
- Prior in-house counsel or law firm experience in a life science, technology or engineering focused firm a plus.
- Demonstrated experience drafting and negotiating complex agreements, including licenses, partnership agreements, and technology transfer contracts.
- Strong understanding of intellectual property law.
- Excellent written and verbal communication skills, with the ability to present complex legal and technical concepts to non-legal stakeholders.
- Proven ability to manage multiple priorities, balance risk, and provide pragmatic legal and strategic advice.
- Collaborative mindset with the ability to work effectively across scientific, business, and legal functions.
Due to the nature of the work performed at Taconic, employees may be exposed to allergens in the workplace, even if their positions do not involve the direct handling of animals or animal bedding. While individuals with preexisting allergies and/or asthma may be particularly sensitive to these exposures, anyone can experience a reaction.
Physical Requirements & Work Environment:
The work is sedentary. Typically, the employee may sit comfortably to do the work, with some walking; standing; bending; carrying of items such as papers, books, small parts; driving an automobile; etc. No special physical demands are required to perform the work.