Description:

Summary:
A World-Leading Inhalation Medicines Company is seeking an intellectual property attorney or agent whose passion lies in creating & leveraging game-changing intellectual property strategies that enable TBI to achieve our strategic objectives of increasing patient's access to essential medicines and addressing unmet medical needs. The Senior Patent Counsel will have a comprehensive understanding of the pharmaceutical industry and the issues surrounding the protection and management of intellectual property within the industry. This role involves managing patent filing and prosecution, protecting the company's intellectual property assets, and providing intellectual property counsel to the management and R&D team. Reporting to the General Counsel, this position will be based in our Weston campus in Florida.

Essential Duties and Responsibilities:

Create and manage global intellectual property portfolios, including drafting and prosecuting patent portfolios; licensing transactions; due diligence assessments; freedom-to-operate, infringement and validity analyses; and risk evaluation and mitigation strategies. Focus areas are inhalation devices, formulation and manufacturing technologies; inhalation therapies; drug delivery to the lungs.
Broad technical competence, ranging from active pharmaceutical ingredients, formulations, and medical methods to the device aspects of inhalation products.
Prior experience in medical devices and/or drug:device combination products, such as inhalation devices, injectable products, drug eluting stents, or drug releasing implants.
Experience in the Orange Book and Hatch-Waxman matters, including preparing FDA certification letters and litigating Hatch-Waxman matters.
Perform patent landscape analysis and create patent landscape reports regularly to the management on the technologies and products relevant to our business.
Partner in all IP-related transactions, adverse proceedings, and litigation activities related to the individual's responsibilities.
Partner with relevant stakeholders at all levels of the global organization and across all phases of research, development, and commercialization to provide a clear, strategic business enabling IP strategy.
Design and develop impactful global IP portfolios from invention capture to patent issuance for R&D discovery and platform technologies, as well as disease treatments.
Manage and prosecute U.S. and foreign patent applications as well as post-grant proceedings (e.g., reexamination, reissue, post-grant review), including foreign oppositions and appeals, as they may arise.
Provide regular education, guidance, and advice on patent law issues to scientists conducting research and other business stakeholders.
Perform due diligence assessments; freedom-to-operate, infringement, and validity analyses; and risk evaluation and mitigation strategies for all existing and potential projects.
Identify and exploit new strategic opportunities and approaches leveraging a deep understanding of patent law and a knowledge of the competitive landscape across A World-Leading Inhalation Medicines Company portfolio.
Maintain and share expertise and knowledge on legal case law, rules, or regulations before the U.S. Patent and Trademark Office as well as other relevant jurisdictional intellectual property offices.
Provide actionable advice to department, and cross-functional projects and initiatives where strategies, processes, operating standards and/or practices are developed and deployed to ensure highest quality practices and execution for all aspects of IP portfolios in a high performing, agile team setting.
Build enduring, productive external relationships with outside counsel and third-party collaborators and partners.
Embrace a growth-mindset and enjoy work in a fast-paced and diverse global organization.
Excel in working independently and proactively with minimal direction, strong organizational skills, and ability to prioritize and balance competing projects and responsibilities.

Qualification Requirements:

5+ experience in patent law, previous experience of practicing in-house in pharmaceutical company preferred.
A degree in biological or chemical sciences or another area relevant to pharmaceutical or biotechnology intellectual property practice. A Ph.D. is desired. A demonstrated understanding of medical devices.
Admission to practice before the U.S. Patent and Trademark Office.
A United States law degree (JD) with current admission to at least one U.S. state bar.