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ProfileCounsel, Intellectual Property The candidate will have strategic management and development of worldwide patent portfolio through in-house drafting of patent applications and responses to PTO correspondence and efficient management of outside counsel. Essential Functions: Strategic management and development of worldwide patent portfolio through in-house drafting of patent applications and responses to PTO correspondence and efficient management of outside counsel. Counsel and educate scientists and product development teams on intellectual property matters and identify patentable inventions through frequent interactions. Review and analyze third party intellectual property to ensure patentability and freedom to operate, identify any potential issues and advise project teams. Supporting business development activities, including conduct of due diligence. Manage trademark portfolio. Communicate with marketing teams with regard to brand protection and development. Collaborate with foreign IP colleagues on global projects and provide advice regarding U.S. practice. Review and negotiate IP provisions in R&D and other contracts. Should have J.D. Must have 3 - 5 Years of experience. Should have 3-7 years patent experience in pharmaceuticals. Registered to practice before the U.S. Patent and Trademark Office required. Must have Juris Doctorate from an accredited law school and member of at least one U.S. state Bar (Massachusetts preferred). Advanced degree in chemistry or substantial experience in the pharmaceutical field. Ph.D. in organic chemistry preferred. Should have demonstrated experience in drafting and prosecuting pharmaceutical patent applications in the U.S. and other countries, as well as conducting freedom to operate and patent invalidity and non-infringement analyses. Must have strong written and verbal communication skills, and demonstrated ability to work collaboratively with scientists to identify and protect new inventions. Should have exposure to litigation, the Hatch-Waxman Act including ANDA approvals, FDA forms for Orange Book listing, and patent term extension.
Auto req ID: 6007BR