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ProfilePatent Counsel The candidate will provide clear, informed and sophisticated counseling to clients within Research and Early Development (gRED), Product Development (PD), Manufacturing (PT), Business Development and other functional areas through all phases of patient-focused drug research, development, and commercialization. Will develop in-depth expertise in particular areas of large molecule drug discovery in order to provide guidance on patent law issues to business groups and scientists conducting research in those areas. Render legal opinions with respect to patentability, validity, and freedom to operate. Maintain a substantial and active global prosecution docket, including handling U.S. and foreign patent applications, with interference, reexamination, post-exam, and opposition practices as they may arise with prosecution. Prepare, file and prosecute patent applications, with a primary focus on the protection of inventions and patent prosecution relating to large molecule therapeutics. Conduct due diligence (including freedom-to-operate, infringement and validity analyses). Provide agreement support (including MTAs, CDAs, research collaborations, and licensing agreements). Support intellectual property-related transactional and litigation work. Manage external relationships with collaborators. Admission to practice before the U.S. Patent and Trademark Office (USPTO) is needed. An advanced degree in biological science is required; Ph.D. is preferred. A United States law degree (JD) is preferred. Agreement and transactional experience is desired. Should have 5+ years of Patent Counsel/Agent experience in active large molecule patent prosecution. Experience in a pharmaceutical, biopharmaceutical, or biotechnology company is a plus. Experience with adverse proceedings (e.g., USPTO adverse proceedings, EPO adverse proceedings, US litigation) is desired.
Job ID: 201807-115436
1 DNA Way
South San Francisco, CA 94080-4990