1+ months

Patent Counsel/Sr. Patent Counsel/Patent Agent, Large Molecule – Manufacturing Processes

Roche
South San Francisco, CA

Genentechâs Intellectual Property team is seeking a collaborative and innovative seasoned patent attorney or agent who loves to think and act outside the box to create game-changing IP strategies that will enable Roche & Genentech to do now what patients need next.  As an IP team member, this individual is versatile and passionate in handling new ways to craft IP positions & protection for groundbreaking innovation.  You will be working with scientists, attorneys, patent agents, and staff across a dynamic & diverse global organization pushing the boundaries of what is possible in a highly competitive industry. This position will be located in our South San Francisco campus and will report to the lead of our Biosimilars, Manufacturing & Litigation Readiness team.

Position Scope and Key Responsibilities:

  • Perform invention harvesting, global patent preparation and prosecution, portfolio development and management, IP searching and/or landscaping, due diligence assessments, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies individually and in cross-functional global teams for our innovative manufacturing processes & business
  • Develop and/or maintain database tools to support freedom-to-operate and due diligence assessments for large molecule manufacturing
  • Develop an understanding of the technology and business strategy of the groups this position supports to both inform the various IP initiatives as well as the underlying business decision-making processes
  • Advise the business stakeholders on IP strategies, risk & associated mitigation strategies associated with BPCIA risk evaluation, deploy mitigation strategies across product portfolios
  • Provide IP diligence, advice and strategy for IP transactions with transactional legal group to business development, research and intellectual property functions and the global manufacturing business in support of local and globally-driven collaborations, licenses, mergers, acquisitions, equity investments, and divestitures
  • Regularly anticipate future challenges and risks to the company and innovate to find solutions and create business value in response to a highly competitive, dynamic marketplace that includes innovators & biosimilar competitors
  • Foster strong, collaborative relationships with stakeholders across global sites and create efficient and effective processes for communicating, advising and working with stakeholders at all levels of the organization
  • Direct & manage outside counsel, related budgets and, where applicable, negotiate rates, project fees, and timelines
  • Cultivate a culture that reflects a strong commitment to diversity, inclusion and community

KEY SELECTION CRITERIA:

Critical Competencies:

Manufacturing Process IP Expert:

  • Demonstrates expertise in global patent portfolio preparation, prosecution, and enforcement for commercially-relevant materials, products or processes
  • Works with therapeutic molecules, modalities and related technologies that are in development or being commercialized
  • Conducts patent database searches and rapidly parses through large amounts of information to identify relevant material
  • Understands and fluent about research tools, processing technologies and/or manufacturing technologies
  • Creates and uses complex spreadsheets (e.g., Excel) and/or databases to manage large amounts of information

Adaptive and Results-oriented Go-Getter:

  • Works rapidly, independently and proactively with minimal direction
  • Exhibits excellent judgment, pragmatism, and negotiation skills
  • Demonstrates strong organizational skills, keen attention to detail, and ability to prioritize projects and meet aggressive deadlines
  • Balances competing priorities while managing IP portfolios; multitasking with ease
  • Innovates and creates business value

Collaborative Partner:

  • Demonstrates exceptional and consistently clear communication, both oral and written, to all levels of an organization as well as a willingness to listen and learn from others
  • Works effectively both independently and in global and cross-functional teams
  • Manages external relationships with outside counsel and collaborators
  • Fosters teamwork and collaboration with other teams, and influences and resolves conflict

Requirements: Ideal Experience and Education

  • 7+ years in creating, prosecuting, and advising on complex global patent portfolios & associated strategies relating to commercially-relevant materials, products or processes
  • Undergraduate or (preferably) advanced degree in chemical engineering, process engineering, materials science engineering, physical sciences, materials sciences, chemistry, biochemistry, or molecular biology; a strong technological aptitude for learning and working with a range of technologies
  • If J.D., then admission to a U.S. State bar or the District of Columbia bar
  • Admission to the United States Patent & Trademark Office Bar
  • Solid knowledge of global intellectual property laws & practices
  • Adverse proceedings (e.g., USPTO adverse proceedings, EPO adverse proceedings, IPRs, and/or US litigation) is a plus
  • Strategic legal advisor in a corporation, including providing advice on complex licensing and/or other transactional matters is a plus

*LI-CG-CY1

Posted: 2018-08-24 Expires: 2018-12-27

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Patent Counsel/Sr. Patent Counsel/Patent Agent, Large Molecule – Manufacturing Processes

Roche
South San Francisco, CA

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