Sr Patent Counsel

Gaithersburg, MD
Full Time
07-24-2019
Job #: 28065 Exp.: 7+ Years
Description:
Job Summary
This position reports to the VP, Associate General Counsel, IP and is responsible for strategic patent portfolio procurement and management directly or through management of outside counsel, and IP support for R&D projects, marketed products, and M&A and licensing, and perform other IP-related in-house responsibilities.

Responsibilities
  • Handles strategic patent preparation and prosecution with a litigation perspective, supports IP transactional work including due diligence and drafting IP provisions for various types of agreements, performing validity and freedom to operate reviews
  • Collaborates with general legal, R&D, commercial, regulatory, and business development colleagues to achieve company goals
  • Actively participates in department initiatives, identifies opportunities to enhance effectiveness of IP department operations, and educates and trains clients regarding IP practices and developments
  • Ability to effectively communicate complex legal issues to project teams and management
  • Help drive performance of business objectives by identifying possible solutions for identified legal issues
  • Strong interpersonal skills with the ability to effectively work in a team environment to resolve complex IP matters
  • Strong prioritization skills in order to effectively manage workload
  • Excellent judgment, analytical and strategic thinking skills
  • Ability to work well in a fast pace, changing environment with confidence, focus, efficiency, and accountability.
  • The above statements are intended to describe the general nature of work performed by those in this job. It is not an exhaustive list of all duties, and other duties may be assigned.

Education, Experience & Skills
  • BS degree in Biology, Biochemistry, Chemistry, Pharmacy, or a related discipline
  • JD degree from an accredited US law school
  • A minimum of 7 years intellectual property experience, including at least 3 years as in-house pharmaceutical/biotechnology IP counsel.
  • Admitted to practice law in at least one US jurisdiction
  • Admitted as an attorney to practice before the USPTO
  • Advanced degree or at least two years of post-graduate experience in the respective BS degree discipline preferred
  • Experience with drug-device combination products, vaccines, or biologics preferred

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