Intellectual Property - Trademark/Copyright Attorney in Emeryville, CA

Profile

Intellectual Property Attorney Responsibilities: Manage IP portfolio for assigned products, including patent and trademark preparation and prosecution for U.S and foreign filings. Providing strategic counsel to the business regarding the competitive IP landscape for the company’s current product portfolio and future product candidates and technology plans. Identify patentable inventions through frequent interactions with internal and external R&D project teams. Manage outside counsel in the preparation and prosecution of patent applications before the USPTO and abroad through foreign counsel. Negotiate and draft agreements with IP implications (e.g., CDAs, MTAs, research agreements, licenses, etc.). Educate and advise colleagues on intellectual property issues and good practices. Prepare or advise the organization on other agreements and/or contracts including research agreements; consulting agreements; license agreements; general commercial agreements, etc.

Qualification and Experience

Qualifications: JD Degree or equivalent. An advanced degree in Microbiology, Bioengineering, Molecular Genetics, or a related biotechnology-relevant discipline. Admitted to practice before the U.S. Patent and Trademark Office and an active member of at least one U.S. state bar (with ability to be admitted in California). 5-10 years of total prior legal experience including time at a top-tier law firm and at least 3 years prior legal experience in the pharmaceutical and/or biotechnology industries. Working knowledge of transactional, commercial, and intellectual property law. Experience drafting and prosecuting biotechnology-related patent applications. Ability to independently draft and negotiate agreements. Comfortable counseling and meeting the needs of multiple internal clients. Experience managing outside counsel. Strong oral and written communication skills. Demonstrated interpersonal interaction skills. Strong organizational skills and ability to manage and drive projects cross-functionally across departments. Strong prioritization skills and the ability to effectively manage multiple tasks and priorities and the ability to quickly adjust to shifting priorities and demanding deadlines.

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