Job Details

Senior Corporate Patent Counsel

Company name

Merck KGaA

Organization Type

In-House

Job Type

Attorney

Date Last Verified

May 16,2019

Valid Through

Aug 29,2019

Posted on

Feb 05,2019

Years of Experience

Min 5 yrs required

Location

Billerica, MA, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biology
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biotechnology
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Chemistry
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Organic Chemistry
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Senior Corporate Patent Counsel
Duties: Take care of issues related to the drafting, filing, maintenance, defense and acquisition of Intellectual Properw (I.P.) rights. Analyze, describe and present complex IP situation to clients in a clear understandable and convincing manner. Prepare guidance to the different units within the company or collaboration partners related to Freedom to-Operate (FTO) and commercialization. Being part of the interface for EMD Serono Research in Billerica representing the US IP department. High knowledge in IP Legal regulations and rules including case law in the US. Provide strong advice on ‘P issues related to agreements of all kind. external communication on a very high level as primary contact to Patent Offices, Courts and Law Firms. DevelopmenVAdaptation and Improvement of a Patent Strategy to support FTO for company’s projects. Sound understanding of patent legislation and relevant case law with special emphasis on US Patent Law. Understanding the activities of the team / function / broader business unit I commercial environment Requires conceptual thinking in complex/completely new situations Adaptation, Development and implementation of a tailor made patent strategy for key business areas Act as a member of a site specific local research and development teams Participate in domestic and/or international contract and business development negotiations Strategic handling of the IP portfolio with regard to licensing, enforcement and maintenance IP and technical guidance of a homogenous team of experts; Assist to manage an interdisciplinary team in litigations and other IP related disputes. Managing a team of paralegals with regard to filing requirements and other formal patent duties often guided by strict deadlines. Management of an interdisciplinary projects and main Interface with Research and Development, Legal, Business Development, Regulatory Affairs. Management of the cooperation with international (IP) Law Firms around the globe. Communication In various facets as in negotiations, through presentations.

Qualification and Experience

Qualifications: Professional expertise at the level of a university degree in Organic Chemistry, Biology, Medicinal Chemistry and/or Biotechnology. Doctorate; PHD in Organic Chemistry, Biology, Medicinal Chemistry or Biotechnology. US patent attorney, European Patent Attorney or similar qualification. Solid professional skills in leading a patent department or a patent group in a law firm. Solid professional skills in managing and handling a complex IP porffolio. Strong academic background in Chemistry, mainly Organic Chemistry, Biology, Medicinal Chemistry and/or Biotechnology. Expert in US patent law and preferably a US patent attorney. Professional experience in drafting of patent applications, prosecuting, enforcing those and filing procedures including inhouse management of a IP portfolio with more than 50 patent families. knowledge of European patent law and the regulations in other jurisdictions Professionaf experience in an international environment Several years of professional experience in the IP business (> 5 years). Strong mature leadership and influencing skills. Fluent In English and preferably one other language (preferably German).

Additional info

Job Requisition ID: 185173

Company info

Hiring coordinator
Merck KGaA
Frankfurter Str. 250
Darmstadt, HESSE 64293

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