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Senior Counsel, Intellectual Property The candidate will be responsible for providing practical, timely and high quality IP support to firm regenerative medicines research site in Marlborough, MA, and other initiatives in the Boston, MA region. Participates in cross functional teams, identifies legal and IP related business issues, provides legal options and analysis of possible solutions and gives recommendations for addressing critical issues so that business and legal objectives are met, while keeping manager appropriately informed. Advises and consults with employees and management and educates clients about ongoing initiatives and proactive measures to reduce legal and IP-related business risks for the company. Assesses the patentability of new technologies developed by US project teams and prepares and prosecutes related patent applications. Ensures patent portfolios are aligned with and support overall commercial and development objectives. Understands the competitive IP landscape and counsels development teams accordingly. Collaborates with other members of the legal team to support IP aspects of contracts, litigation, and complex due diligence initiatives. Executes timely, comprehensive freedom to operate analysis and develops sound, tactical approaches to minimize third party IP risk to product initiatives. Participates in the creation and implementation of IP policies and procedures within the US IP team. Routinely engages in client counseling and education. Initiates and oversees administrative proceedings to invalidate third party patent rights (e.g. Post grant proceedings, opposition, etc.), where appropriate.
Qualification and Experience
The candidate must have JD degree and admitted to practice before the USPTO and a State Bar. Should have BS degree in biology, chemistry, biochemistry or a related field. 8+ years IP experience in patent drafting and prosecution, FTO analysis, client counseling and agreement review, preferably 4+ years in a corporate legal department of a pharmaceutical company. Ability to craft and execute complex patent strategies related to pharmaceutical and cell therapy development is needed. Demonstrated knowledge and understanding of the pharmaceutical industry, including R&D, regulatory, manufacturing and commercial elements is must. Understanding of and ability to manage the cultural and logistical challenges of working with a foreign parent company and within a global organization is essential. Transactional experience in drafting and negotiating a wide range of agreements including patent license, collaboration agreements, and development agreements is preferred. Experience providing IP support to clients in a wide range of technologies, including pharmaceuticals and regenerative medicine is desired.
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