1+ months

Patent Counsel/Agent/Sr.Patent Counsel/Agent, Small Molecule IP Team

Roche
South San Francisco, CA

Patent Counsel/Agent, Small Molecule IP Team:

Genentechâs Intellectual Property team is seeking a dynamic and collaborative individual who enjoys challenges and is looking to become an innovative thought leader whose passion lies in creating & leveraging game-changing IP strategies that will enable Roche & Genentech to do now what patients need next.  As an IP team member, this individual will be pushing the boundaries of what is possible in a highly competitive industry working with great attorneys, patent agents, and staff across a dynamic & diverse global organization. This position will be located at our South San Francisco campus.


Key Responsibilities Include:

Provide Advice & Counsel:

  • Provide clear, informed and sophisticated counseling to clients within Research & Early Development (gRED), Business Development and other functional areas through all phases of patient-focused drug research, development, and commercialization
  • Develop in-depth expertise in particular areas of small molecule drug discovery across all therapeutic areas in order to provide guidance on patent law issues to business groups and scientists conducting research in those areas
  • Give legal opinions with respect to patentability, validity, and freedom to operate

Create & Manage Dynamic Patent Portfolios:

  • Drive global IP strategy by managing a substantial worldwide prosecution docket, including prosecution of U.S. and foreign patent applications, including interference, reexamination, post-exam, and opposition practices as they may arise
  • Prepare, file and prosecute patent applications in close collaboration with scientists
  • Conduct freedom-to-operate, infringement and validity analyses

Collaborate, Manage, & Support Others:

  • Collaborate with colleagues around the world on IP matters
  • Support intellectual property-related transactional work
  • Manage relationships with collaborators and outside counsel

Qualifications:

Experience/Education:

  • 5+ years of Patent Counsel/Agent experience in active small molecule patent prosecution; 50% or more time spent in patent application drafting and prosecution in a pharma or biotech therapeutics in a corporate setting and/or representing such clients in a law firm
  • An advanced degree in chemistry is highly desired
  • Admission to practice before the U.S. Patent and Trademark Office (USPTO)
  • A United States law degree (JD) is preferred
  • Experience in a pharmaceutical or biotechnology company is a plus
  • Experience with adverse proceedings (e.g., USPTO adverse proceedings, EPO adverse proceedings, US litigation) is desired
  • Experience with agreements and transactions is desired

Your Role as a Member of Genentechâs IP Legal Team:

In a high stakes and dynamic patent environment within a complex and global company, you will:

  • Drive strategic IP procurement and management of global intellectual property rights including drafting & prosecuting patent portfolios, licensing transactions, due diligence assessments, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies
  • Influence business leaders as a trusted advisor and thought partner
  • Maintain a strong knowledge of legal case law, rules and regulations before the US Patent & Trademark Office as well as knowledge of practices in other countries
  • Have fun as an adaptive, results-oriented performer in a fast-paced, diverse & global environment
Posted: 2018-11-06 Expires: 2018-12-20

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Patent Counsel/Agent/Sr.Patent Counsel/Agent, Small Molecule IP Team

Roche
South San Francisco, CA

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