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ProfilePatent Attorney Duties: Taking on a role that bridges science and legal practice, you’ll be a global business IP advisor. Will entail managing the patent portfolio for assigned projects and products, and keeping up to date with emerging legal and pharma developments to help set and implement the global IP strategy in your area in collaboration with the Senior Patent Director. Will be to identify and manage all associated IP risks – communicating them to IP, legal and business teams. Will craft strategies for the filing, prosecution, maintenance and defense of patents in your portfolio against third-party challenges. May also work on business development deals or coordinate our response to legal changes in a particular country or region. Managing external spend to meet budget targets will also be part of role. Actively counsel members of Research & Development organizations to identify new inventions as well as devise and implement strategies for patent protection over extended drug development life cycle. Create and implement global strategic approaches toward building patent portfolios and providing value to business. Prepare and prosecute patent applications (US and ex-US) including effectively managing outside counsel as needed. Manage all aspects of large intellectual property estates in core and opportunistic therapeutic areas . Evaluate and monitor patent portfolios of third parties. Develop and communicate IP guidance to stakeholders across the business, including within R&D, Business Development, commercial, legal. Review and analyze license agreements and other contracts. Provide IP and technical analysis in support of patent litigations.
Qualification and Experience
Requirements: Licensed US Attorney, USPTO Registration Number. Ph.D. or equivalent, and/or several years of laboratory experience in relevant scientific area. 4+ years chemistry patent prosecution experience with global portfolios, preferably also including experience with antibody/life sciences portfolios; combination of both in-house and law firm experience preferred. Desirable: Experience in the pharmaceutical industry. Experience of managing external service providers. First-hand experience of IP-related litigation. High level of professionalism and motivation, ability to work independently. Ability to take initiative to complete tasks and manage risks. Ability to manage multiple tasks and projects with rapidly changing priorities. Outstanding organizational skills and attention to detail. Effective oral and written communication skills. Effective time management skills. Adaptable and versatile learner. Ability to be an enterprise leader for the organization.
950 Wind River Ln
Gaithersburg, MD 20878