Description:
As Patent Counsel, Synthetic Molecules, you will be part of the Global Synthetic Molecules Patent team within A Pharmaceutical Company´s Global Intellectual Property Department. Based in Cambridge, Massachusetts, you will be dedicated to all aspects of patent protection for a diverse range of programs across A Pharmaceutical Company's global business units primarily related to small molecules. You will advise on a wide range of intellectual property matters, including patent preparation and prosecution, worldwide patent portfolio management, overall IP strategy, patentability, and freedom-to-operate analyses.Main Responsibilities:
- Prepare, file, and prosecute US, EPO, and foreign patent applications in chemical and pharmaceutical areas.
- Interact with colleagues at all levels of the organization (including Research & Development, Project Management, Business Development, Franchise, Industrial Affairs) in the US and Europe to provide counselling and proactively solicit invention disclosures.
- Provide patentability evaluation of IP related to internal, collaborative, and external projects.
- Manage post issuance patent proceedings, such as post grant reviews, inter partes reviews, and oppositions.
- Participate in due diligence of license agreements and the drafting, reviewing, and negotiation of agreements covering intellectual property rights.
- Conduct, direct, and analyze patent searches and render opinions on validity, non-infringement, and patent avoidance of third-party patents.
- Review proposed research papers and other publications for any impact on patent strategies.
Key Competencies:
- Extensive experience in handling complex pharmaceutical IP matters and counselling senior and executive level clients/colleagues is required.
- Experience in managing US post-grant proceedings, EP Oppositions, IP due diligence, and complex agreement drafting is required.
- Able to independently handle preparation and global prosecution of patent applications.
- Ability to work in a team within an international professional network and interact with colleagues in other countries.
- Orange Book listing and patent term extension/supplementary protection certificate experience is preferred.
Qualifications:
- A Juris Doctor from a recognized, accredited law school.
- Active membership and good standing in NJ, MA, or other state bar.
- Registered US Patent Attorney is required.
- A minimum of a graduate degree (MS, PhD) in a chemical or biochemical science is required.
- A minimum of 8 years of patent law experience gained in-house and/or in a law firm.
- A motivated, proactive person, exhibiting initiative to contribute to the team beyond the mere handling of assigned projects.
- This position may require up to 10% overall travel (domestic and international).
