IP Alliance & Due Diligence Patent Counsel

Description:

An American Biopharmaceutical Company that discovers, develops, and commercializes innovative therapeutics in areas of unmet medical need. The company's mission is to advance the care of patients suffering from life-threatening diseases worldwide. Headquartered in Foster City, California, An American Biopharmaceutical Company has operations in North, South and Central America, Europe, Africa, Asia, and Australia. An American Biopharmaceutical Company makes it a priority to increase access to its medicines for people who can benefit from them, regardless of where they live or their economic status.

IP Alliance and Due Diligence Patent Counsel
This role is responsible for managing IP activities related to due diligence investigations, research collaborations, IP contract review, and coordination with the An American Biopharmaceutical Company. The IP Alliance and Due Diligence Patent Counsel will work closely with and report to the IP Alliance and Due Diligence Team Lead.

Specific Responsibilities and Skills:
The IP Alliance and Due Diligence Patent Counsel must have excellent business judgment and be able to assess and evaluate complex IP risks. The ability to work with cross-functional teams is key, as is the ability to manage multiple complex and time-sensitive matters. Extensive experience conducting patent due diligence investigations is “a must” as is a deep understanding of pharmaceutical patent and post-approval practice. Prior patent prosecution and litigation experience is highly desirable. The IP Alliance and Due Diligence Patent Counsel must be able to communicate effectively to senior business, legal, and scientific leaders. The IP Alliance and Due Diligence Patent Counsel also must possess strong project management, technical and interpersonal skills.

Knowledge:

• Experience in conducting due diligence investigations, including assessments of ex-US patent rights.
• Deep understanding of pharmaceutical patent practice, including
• Patent prosecution and patent portfolio management.
• Hatch-Waxman/BPCIA litigation.
• Regulatory data exclusivities, patent term extensions, and supplementary protection certificates.
• Strong contract and third-party relationship skills.
• Highly developed verbal and written communications skills to deliver clear and concise communications.

• Independently conducts and manages patent due diligence investigations, including the management of outside counsel. Responsibilities include, but is not limited to:
• Evaluating the patentability of target's patent portfolio and assessing freedom-to-operate for target compounds and technology.
• Drafting IP due diligence opinions and presentations.
• Providing outside counsel all necessary legal and business information to achieve the business objective.
• Participates in negotiation of contracts in connection with transactional activities of commercial and/or developmental products.
• Coordinates and liaises with Alliance Management Team post-deal close and during the term of license and/or collaboration.
• Assists with integration activities post-deal close.
• Develop and execute creative patent prosecution strategies for U.S. and foreign patent portfolios.
• Delivers IP educational presentations to legal staff, researchers, and business people at An American Biopharmaceutical Company.

Qualifications:
Specific Education & Experience Requirements:

• Requires a Juris Doctorate and admission before a State bar.
• 6+ years of industry or law firm experience, which includes 4+ years in Biotechnology or Pharmaceutical patent prosecution experience.
• Typically requires bachelor's degree in Chemistry or Biochemistry (or related sciences).
• Registered before the USPTO.
• High proficiency in computer skills including Word, Outlook, Excel, and PowerPoint, etc.
• Experience with the iManage document management experience is preferred.
• Experience with docketing systems (e.g., CPI) is preferred.
• Candidates must possess the ability to work well with others in a team setting.
• Organizational skills, exceptional time management and attention to detail are a must.

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