Overview

The Sr. Counsel will be an experienced patent attorney responsible for various internal and partnered biologics projects. The Sr. Counsel will advise on a wide range of IP matters, including patent preparation and prosecution, worldwide portfolio management, global IP strategy, patentability and freedom-to-operate analyses. The position will report directly to the IP Therapeutic Area Head for Oncology, GI, or Neuroscience, as there are positions open across the therapeutic areas.

ACCOUNTABILITIES: (Describe the primary duties and responsibilities of the job. Approximately 5  10 bulleted task statements should be identified).

The successful candidate will

  • represent IP in and establish rapport and positive working relationships with project/program teams by acting as their advisor on a variety of IP related issues including publication reviews, IP agreement negotiation and support, and other IP issues that arise in usual course of business
  • develop and implement strategies to protect the Companys intellectual property assets (including commercial products, research findings, development candidates, and other related subject matter)
  • prepare and prosecute worldwide patent applications, and conduct patentability and freedom to operate assessments for discovery, development and commercial related activities
  • participate or assist with IP due diligence and IP agreement review/negotiation for Takedas investment, M&A, and partnering activities
  • directly and/or indirectly manage legal resources, including outside counsel, to complete projects in a timely and high-quality manner
  • participate in and develop strategic support for IPRs, opposition proceedings, and other patent office proceedings
  • provide support to IP litigation
  • identify training needs within the organization and assist in the development and presentation of training materials on relevant IP laws and related business issues
  • develop and continually expands a thorough understanding of the Companys current and planned business activities, products, competitors, and markets and keep abreast of developing legal trends, laws and regulations


EDUCATION, BEHAVIOURAL COMPETENCIES AND SKILLS: (List the essential and desirable education and competency requirements to perform the primary responsibilities of the job. Any minimum requirements should be highlighted.)

Equivalent combinations of education and experience should be noted.)

  • Experience in handling complex IP matters related to medical devices and biological processing devices, including delivery devices for therapeutics, infusion devices, companion diagnostic devices, application of artificial intelligence to medical research, patient service applications and medical device applications, and device designs.
  • 8+ years of experience practicing intellectual property law (law firm and/or in-house)
  • Mature and professional demeanour with a high degree of self-motivation and initiative
  • Strong communication and presentation skills, ability to communicate complex issues clearly and succinctly
  • Sound judgment and decision-making abilities
  • Strong organizational skills, including careful attention to detail and ability to handle and prioritize multiple assignments and maintain strict deadlines through effective time management
  • Experience in handling IPRs, opposition proceedings and/or litigation would be a plus

LICENSES/CERTIFICATIONS:

  • Degree in computer science, engineering, biomedical sciences, or related scientific degree.
  • Juris Doctorate degree
  • Registration before a state bar
  • Registration to practice before the U.S. Patent and Trademark Office

PHYSICAL DEMANDS: (Identify any physical demands required in the performance of the primary responsibilities of the position).

  • Manual dexterity required to operate office equipment (i.e. computers, phones, etc.).

TRAVEL REQUIREMENTS:

  • Willingness to travel to various meetings or sites, including overnight trips. Some international travel will be required.
  • Requires approximately 10 % travel.

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