Job Details

Patent Attorney - Chemistry, R&D IP

Company name

Organization Type

In-House

Job Type

Attorney

Date Last Verified

Oct 19, 2021

Valid Through

Feb 01, 2022

Posted on

Sep 28, 2021

Years of Experience

Min 7 yrs required

Location

Cambridge, MA, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Chemistry
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Patent Attorney - Chemistry, R&D IP
Duties: Provide clear, informed, and sophisticated counseling to the Company’s R&D clients on opportunities to protect their inventions, create IP portfolios, advise on publication strategies, and mitigate third-party risks. Build and manage patent portfolios for the Company’s R&D projects by identifying inventions and preparing, prosecuting, maintaining, and defending patent filings for them, especially in technical areas related to new chemical entities and their uses, processes, platforms, and technologies, as well as clinical developments. Render legal opinions with respect to patentability, validity, and freedom to operate, and formulate patent strategies for the Company’s R&D clients that secure IP positions and freedom-to-operate (FTO), as well as enable IP defense(s). Apply deep expertise in national patent law and practice, in particular for the US but also other major jurisdictions such as EP, JP, and CN, including patent trends and case law developments, to devise patent strategies and advice. Understand other forms of protection relating to exclusivity, and apply as required. Communicate effectively and clearly with colleagues and leadership in the legal and IP function as well as the R&D organization. Build and manage external relationships with outside counsel and collaborators, including substantial interactions within a multicultural global patent function. Conduct due diligence assessments and counsel based on these assessments, including FTO, infringement and validity analyses, and risk evaluation and mitigation. Provide IP support for transactional projects, such as research collaborations and in-licensing opportunities, including advice on contract drafting and negotiation. Perform timely review of publication requests. Deliver work results on time, on target, and within budget. Continue professional development and contribute to the development of IP colleagues.

Qualification and Experience

Qualifications: J.D. Degree. Admission to at least one State Bar & registered to practice before US Patent Office. A Bachelor’s Degree in chemistry or equivalent. MS/Ph.D., or equivalent, in organic chemistry or pharmaceutical science, is preferred. 1+ years of exposure to the drug discovery and development processes utilized at pharmaceutical and/or biotechnology companies. 7+ years of experience as a patent practitioner in a law firm or in the pharmaceutical or biotechnology industry. Strong scientific background in chemical sciences, in particular, organic or pharmaceutical chemistry; preferably including direct lab experience. Expertise in local (US) and PCT law, filing process, and prosecution practice; detailed understanding of counterpart European patent law and other major global patent systems. Experience integrating global outlook and management of product lifecycle into the decision-making process. Strong customer-service experience & focus to build and sustain effective partnerships with key stakeholders and project teams. Effective analytical, presentation, and business communication skills. Strong interpersonal skills (partnership, influence/persuasion, teamwork. Demonstrated ability to work both independently and collaboratively in a team. Well-developed research and critical thinking skills, and sound decision-making abilities, with attention to detail to produce consistently accurate work. Strong organization and time management skills with flexibility, creativity, resourcefulness to successfully prioritize and manage multiple, competing priorities simultaneously.

Additional info

Req. #: 328557BR

Company info

Hiring Coordinator
Novartis Institutes for BioMedical Research, Inc.
250 Massachusetts Avenue
Cambridge, MA 02139

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