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Intellectual Property Counsel The candidate responsibilities include: Creates the culture and processes to identify and evaluate potential IP opportunities and encourages the creation and protection of IP to ensure long-term competitive advantage. Oversees all aspects of patent application preparation and prosecution for multiple Research and Development projects including identification of new inventions, patentability and FTO searching, lifecycle management and integration of acquired/licensed patent portfolios. Manages and directs relationships with outside counsel, including patent prosecution/assessment and assessment of infringement claims and provides support for patent litigation. Provides counseling and training to the Research & Development organization on key legal/compliance topics, in coordination with other members of the legal team. Participates in assigned due diligence evaluations, performed internally and in partnership with external resources, and evaluates and reports on IP risks attendant to the contemplated transaction, as appropriate. Collaborates with business development to negotiate and draft agreements in execution of the company’s corporate transaction and alliance management strategies. Must be Juris Doctorate admitted to practice law in at least one state, preferably New Jersey or New York. Must be admitted to practice before US Patent Office. Law firm and pharmaceutical corporate practice experience preferred with minimum 10 years’ experience. Undergraduate degree in Chemistry, Biochemistry or Biology required. Graduate degree in Organic Chemistry, Pharmacology or Biochemistry or industrial laboratory experience is preferred. Experience with small molecules preferred. Must have demonstrated experience in patent preparation and prosecution, licensing and negotiation, mergers and acquisitions and due diligence, litigation, and strategic client counseling.
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