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Years of Experience
Date Last Verified
Patent Counsel Duties: Represents IP in Global Product and Global Brand Teams and for leading the IP strategy for Global Product Teams and Global Brand Teams (and related sub-teams such as Clinical, CMC, TMed or other sub-teams) by translating strategic decisions into operational plans consistent with IP Therapeutic Area strategy. Establishes rapport and positive working relationships with GPT, GBT and related sub-team members and act as their advisor on a variety of IP related issues including publication reviews, IP agreement support, and other IP issues that arise in the GPT, GBT or other sub-team activities. Builds consensus across global IP regions/functions for GPT, GBT and/or other Global Function activities. Contributes to the development of policies/procedures for IP Therapeutic Area, Regional or Global Functional Groups, in collaboration with IP TAH, IP Region Head and/or IP Function Head. Prepares and prosecutes or oversees the preparation and prosecution of worldwide patent applications and conducts patentability and freedom to operate assessments for Discovery, Development and Commercial related activities. Oversees/conducts IP due diligence, IP review and IP agreement negotiation support for Takeda’s investment, partnering and in licensing activities. Participates in interference and opposition proceedings. Provides Intellectual property litigation support. Develops and continually expands a thorough understanding of the Company’s current and planned business activities, products, competitors, and markets in order to identify relevant legal trends, laws and regulations Leads/Participates in and provides strategic support to contract negotiations for IP provisions with outside parties (corporations, academia, research institutes, etc.) related to Takeda’s Discovery, Development and Commercial Program activities. Manages legal resources internally, directly and/or indirectly, and externally to complete projects in a timely and high quality manner. May supervise one or more direct reports and one or more other global IP members. Provides guidance and training to less experienced IP attorneys and other global IP members Identifies training needs within the organization and assists in the development and presentation of training materials on relevant IP laws and related business issues. Perform special assignments or projects, as assigned by senior attorneys.
Qualification and Experience
Qualifications: JD Degree. Registration before a state bar. Registration to practice before the U.S. Patent and Trademark Office. 8+ years' experience practicing intellectual property law (law firm and/or in-house) is required, preferably 4+ years of in-house experience. Experience and skills in management of Patent Professionals a plus. Experience in leading negotiation of complex licensing and/or M&A agreements preferred. Background in organic chemistry. Strong technical expertise/knowledge in the small molecule areas (experience in managing development programs a plus). Strong communication and presentation skills. Ability to influence and work successfully with varied audiences.
Ref - 1800429
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