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Years of Experience
Date Last Verified
ProfilePatent Counsel The candidate will provide clear, informed and sophisticated counseling to clients within Research & 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. Develop in-depth expertise in particular areas of small 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 prosecution docket of 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 small 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. Should preferably have 5+ years of patent agent/counsel experience in active small molecule patent prosecution; 50% or more in patent application drafting and prosecution in a pharma or biotech therapeutics corporate setting and/or representing such clients in a law firm. Admission to practice before the U.S. Patent and Trademark Office (USPTO) is essential. An advanced degree in organic or medicinal chemistry is required; Ph.D. preferred. A United States law degree (JD) is preferred. Agreement and transactional experience is desired. Counseling clients on complex legal issues and potential implications to current or future strategies and molecule/medicine development. Prosecuting active and complex patent portfolios with respect to therapeutics in development or being commercialized. Demonstrating strong knowledge of domestic and international laws, regulations, and processes relating to patents. Demonstrating excellent judgment, negotiation and communication (verbal and written) skills; able to simplify the complex and adapt to audiences with varying levels of legal fluency. Engaging and influencing business leaders without direct ownership. Collaborating with legal and business leadership, with the presumption that views will be well-formed, pragmatic and communicated in a very professional manner.
Job ID: 3108792457
F. Hoffmann-La Roche Ltd
1 DNA Way
South San Francisco, CA 94080-4990