Job Details

Associate Counsel, Intellectual Property / Legal

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 3 yrs required

Location

Cambridge, MA

Date Last Verified

Aug 11,2017

Posted on

Sep 29,2016
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Chemistry
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biology
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Associate Counsel, Intellectual Property / Legal Duties: Assist the Intellectual Property/Legal Team in building, managing, defending and enforcing the company’s intellectual property rights and those of its proprietary venture companies. Supporting in-house senior counsel in the capturing of innovation, development of the intellectual property estate and counseling of the internal client with regards to due diligence efforts, patent ability, freedom-to-operate and other intellectual property-related matters. Work on a wide range of intellectual property issues in a rapidly-growing, disruptive biotechnology company. Will develop deep expertise in the mRNA therapeutics field to assist in all aspects of patent portfolio development and management. Facilitating patent preparation and prosecution work with outside counsel to establish and expand a strong patent portfolio. Interacting with and Venture scientists to capture innovation and serve as an expert conduit of information to outside counsel to produce high-quality patent applications. Drafting of legal arguments to support U.S. and foreign prosecution efforts. Interaction with and guidance of venture companies in the vaccine, rare disease, oncology and personalized cancer vaccine fields as well as corporate partners. Conducting patentability and freedom-to-operate searches and analyses. Conducting due diligence analyses of potential research collaborators and third party competitors, including competitive intelligence gathering on key contenders in the therapeutic space. Supporting corporate strategic IP initiatives.

Qualification and Experience

Qualifications: JD Degree and admitted to practice in at least one state, Massachusetts preferred. Advanced degree in chemistry or the biological sciences with a Ph.D. in biological sciences preferred. Registered to practice before the US Patent and Trademark Office. 3+ years in-house and/or law firm experience. Experience in patent preparation and prosecution, IP due diligence, patentability and freedom-to-operate assessment required. Scientific accomplishment enabling rapid understanding of mRNA therapeutic technology. Preferred: Extensive knowledge of patent prosecution procedure, including international and foreign patent prosecution procedure, patent statutes and treaties. Exceptional communication skills, including, writing and presentation skills. Well-developed research, problem-solving and critical thinking abilities. Clear potential to establish professional dependability with executive level management by conveying clear, succinct and correct advice, including straightforward guidance as to potential risks and benefits of IP-related activities. Ability to independently handle legal matters, assist and guide outside legal counsel and work collaboratively with both scientific and corporate workforces. Ability to set and meet ambitious deadlines, handle numerous multifaceted legal issues and see projects through conclusion and beyond. Interest in following and building knowledge base on IP case law, PTO developments, and IP legislation. Strong customer/client service mindset. Sound judgment and decision making abilities. Excellent organizational skills.

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