Job Details

Intellectual Property Counsel / Senior Counsel

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 5 yrs required

Location

Mountain View, CA

Date Last Verified

Aug 19,2017

Posted on

Jul 08,2017
Practice Area
Intellectual Property >> Intellectual Property - Trademark/Copyright
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Profile

Intellectual Property Counsel / Senior Counsel Duties: Oversee and direct the Company’s IP strategy relating to its genetic testing business and ensure alignment of IP strategy with corporate objectives; Work closely with scientific, engineering, business development (BD), product, and marketing teams to understand new developments, facilitate IP development, and ensure effective IP protection for the Company’s innovations and technologies relating to its genetic testing business; Provide practical guidance and counseling to Company scientific, engineering, BD, product, and marketing teams on a variety of IP matters relating to the Company’s genetic testing business, including patent, trade secret, trademark copyright matters; Design and conduct freedom to operate analyses, patent landscape searches, and prior art searches as needed; Assist and manage outside counsel in strategically developing and implementing patent strategies that support Company goals for its genetic testing business and in effectively prosecuting the Company’s patent portfolio; Assist and manage outside counsel in developing trademark and copyright protection for the Company’s genetic testing business and prosecuting the Company’s trademark portfolio; Provide review of technical manuscripts, posters, slide presentations and other materials proposed for publication; Provide guidance on IP matters to 23andMe’s BD team for transactions and commercial agreements for the Company’s direct-to-consumer personal genetic testing business; Develop and implement policies and procedures relating to IP as needed; and Provide periodic training on IP topics to teams dedicated to Company’s genetic testing business as needed.

Qualification and Experience

Qualifications: JD Degree. Active member of California State Bar. Registered to practice before the U.S. Patent and Trademark Office. At least a B.S. degree in biochemistry, molecular biology, bioinformatics, bioengineering, chemical engineering, or similar technical field, or at least a B.S. degree in computer science with substantial experience in biotechnology, bioengineering, bioinformatics, chemical engineering, or similar technical field. An advanced degree in a relevant field is a plus. Strong knowledge of IP law, including recent case law and AIA developments. 5+ years of experience practicing patent law in biotechnology, bioengineering, bioinformatics, chemical engineering, computer science with biotechnology applications, or similar technical field in a corporate in-house patent department and/or law firm (with least two years of this experience preferably being in-house experience). 2+ years of experience in patent prosecution and portfolio management in biotechnology, bioengineering, bioinformatics, chemical engineering, computer science with biotechnology applications, or similar technical field. Experience evaluating commercial and technical activities of third parties, conducting freedom-to-operate analyses, competitive reviews, and IP due diligence matters. Experience harvesting and identifying patent eligible inventions relating to genetic testing, bioinformatics, and computer-implemented methods with biological applications is a plus. Experience in design patent and/or trademark matters is a plus. Excellent written and oral and communication skills. Strong leadership skills with a strong client focus; ability to work independently as well as collaboratively in cross-functional teams. Strong analytical skills and technical and scientific expertise. Ability to work efficiently, prioritize workflow, meet demanding deadlines, and balance competing priorities in a fast-paced environment.

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