Description:
Position Summary:A Biotechnology Company is seeking a talented individual to join our company full-time as Patent Counsel. The individual will work closely with the VP, Head of Legal and a multidisciplinary team of scientists/engineers and industry professionals to capture innovation at A Biotechnology Company.
A successful candidate will be responsible for managing A Biotechnology Company's patent portfolio, including identifying inventions, conducting patentability assessments, and drafting and prosecuting existing and new patent applications, with support from outside counsel as appropriate.
Key Responsibilities:
- Developing a thorough understanding of A Biotechnology Company's platform, and staying up-to-date on ongoing innovation at A Biotechnology Company and developing legal trends, laws and regulations.
- Working with the VP, Head of Legal to develop and implement a patent strategy with the goal of harvesting innovation at A Biotechnology Company and continuing to advance A Biotechnology Company's patent estate
- Strategically managing A Biotechnology Company's intellectual property portfolio, working closely with the R&D team to identify key inventions, and mining A Biotechnology Company's existing patent estate for new opportunities
- Working with outside counsel to draft and prosecute patent applications related to A Biotechnology Company's platform
- Contributing to, and maintaining positive relationships with, strategic external relationship counterparts
- Review publications, presentations, press releases and other materials for clearance
- Educating and advising senior management & scientists on important IP issues and advance IP/patent awareness
- Supporting complex transactions and disputes, litigation, IPRs, PGRs and oppositions as appropriate
Qualifications:
- Required - A minimum of a Bachelor's degree in chemical engineering, chemistry, materials science or other relevant discipline
- Required – J.D. from an accredited U.S. law school
- Required – Member of the Patent Bar
- Required – 5 or more years of experience as an attorney in a law firm or corporate setting, drafting and prosecuting patent applications (Note: time accrued as a practicing patent agent may be considered)
- Required – Admitted to practice law in Massachusetts and in good standing
- Preferred – Masters or Ph.D. in chemical engineering, chemistry, materials science or other relevant discipline
- Must be able to work collaboratively in a team environment with a wide variety of colleagues and external partners
- Strong technical/analytical skills, combined with a practical, business-oriented and strategic approach to identifying and solving business and legal problems and to provide balanced, solution oriented guidance
- Experience drafting and negotiating life science contracts and other agreements
- Self-motivated, assertive, and self-confident with the ability to act independently with urgency and passion