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In House Counsel - IP Prosecution Duties: Help foster and grow the companyâ€™s intellectual property group, with a particular focus on large molecule assets and/or small molecule chemistry. Participate in strategic planning and implementation of patent preparation and prosecution strategies as well as due diligence projects. Working both individually and in cross-functional teams, will develop and implement intellectual property strategies for AbbVieâ€™s therapeutic products, clinical candidates, and late-stage development assets. Develop in-depth expertise in various aspects of biological and chemical sciences in the medicinal field. Interacting closely with the companyâ€™s business groups and scientists, the attorney will provide guidance on patent law and strategies to procure, preserve and protect the companyâ€˜s intellectual property. An integral and invaluable member of the business and provide pivotal guidance to facilitate the discovery and innovative approaches to patient health. Responsibilities will include working with scientific teams to identify patentable subject matter; drafting, filing, and prosecuting patent applications worldwide both directly and through management of outside counsel; analyzing third-party patent positions; conducting due diligence in support of licensing and acquisition activities; providing legal advice and counsel to cross-functional R&D and business teams on a variety of IP-related matters; and defending patents in post-grant proceedings.
Qualification and Experience
Qualifications: JD degree from an accredited law school, state Bar admission (IL admission not required) and registration to practice before the USPTO. A bachelor degree in science is required. Technical background should include experience and/or academic degree in a pharmaceutically relevant field, such as biochemistry, biotechnology, molecular biology, oncology, immunology, genetics, chemical engineering or pharmacology. 3+ years of experience practicing patent law at a law firm and/or biopharmaceutical company, including substantial U.S. and foreign patent prosecution. Experience with preparation and prosecution of patent applications for both biologic and small molecule therapeutic candidates, and experience in defending patents in post-grant proceedings before national patent offices in the U.S. and abroad. Agreement and transactional experience is desired. Strong legal, analytical, communication, and interpersonal skills. Demonstrated ability to manage and complete complex projects within specified deadlines.
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