Overview

Key Responsibilities include:

  • Driving 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.
  • Partnering in all intellectual property-related transactions, adverse proceedings, and litigation activities related to individuals program responsibilities.
  • Partnering effectively with relevant stakeholders at all levels of the global organization and across all phases of research, drug development & commercialization to provide clear, strategic business enabling strategy, counseling and options through all phases of patient-focused drug research, development, and commercialization. Stakeholders include Research & Early Development (gRED), Product Development (PD), Manufacturing (PT), Pharma Partnering located in South San Francisco.
  • Embraces agility and welcomes iteration as tools of continuous improvement  both personally and within and across all aspects of high performing teamwork
  • Collaborating and working effectively in a matrixed environment
  • Exemplifying winning as one team through building effective relationships, communicating & collaborating enthusiastically across time zones and cultures.
  • Sustainably building enduring, productive external relationships with outside counsel and third party collaborators & partners.
  • Embraces and cultivates a culture that reflects a strong commitment to diversity, inclusion and community
  • Engaged & creative member of a practice area group and of the Genentech IP Team.

The successful candidate has a growth mindset, enjoys work in a fast-paced, diverse, & global organization, and is energized by the complexity and challenges of bringing great medicines to patients. This candidate excels at working independently and proactively with minimal direction, displays strong organizational skills, keen attention to detail, and ability to prioritize and balance competing projects, and effectively meet aggressive deadlines when needed.

Specific Daily Responsibilities & Associated Skill Sets may include:

  • Designing & delivering value add global IP portfolios from invention capture to patent issuance. Managing and prosecuting active global dockets, including handling U.S. and foreign patent applications as well as post-grant proceedings (e.g., reexamination, reissue, post-grant review), including foreign oppositions and appeals, as they may arise.
  • Deploying in-depth patent & scientific expertise to provide education, guidance & advice on patent law issues to scientists conducting research and other business stakeholders
  • Rendering due diligence assessments, freedom-to-operate, infringement and validity analyses, risk evaluation, and mitigation strategies for individual program molecules, technologies, tools and the like.
  • Identifying and exploiting new strategic opportunities & approaches leveraging a deep understanding of patent law and a knowledge of the competitive landscape across the GNE franchises & portfolio.
  • Maintaining and sharing expertise and knowledge on legal case law, rules or regulations before the US Patent & Trademark Office as well as other relevant jurisdictional IP offices
  • Leading and/or participating in Group, Department, and cross-functional projects and initiatives where strategies, processes, operating standards and/or practices are developed & deployed to ensure highest quality practices & execution for all aspects of IP portfolios in a high performing, agile team setting.
  • Exhibiting a can do attitude in anticipating and proactively resolving issues & conflicts
  • Acting as a role model in, for example, communication, poise under pressure, solution-oriented mindset, collaboration across local & global teams, preserving in the face of obstacles, tackling new challenges with curiosity, effectively utilizing available resources.
  • Clearly communicating at all levels of the organization with a willingness to listen & learn from others.
  • Assuring that GNE remains a great & fun place to practice game-changing IP law.

Requirements:

  • Demonstrated experience and track record of success in:
    • Building & leveraging global IP portfolios at all stages of prosecution and enforcement;
    • Designed and executed complex freedom to operate analyses across different technologies and different jurisdictions; developing and communication actionable risk mitigation strategies
    • Experienced in IP transactions including but not limited to due diligences, M&A, complex collaborations, asset acquisitions and settlement agreements;
    • Experienced in adverse proceedings including but not limited to US litigation, adverse proceedings in, e.g., USPTO, EPO, JPO, & SIPO adverse proceedings and the like;
  • [Patent Counsel/Patent Agent] 3+ years of experience in pharma, biopharma or biotechnology intellectual property portfolio creation, strategy, and counseling.
  • [Senior Patent Counsel/Senior Patent Agent] 7+ years of experience in pharma, biopharma or biotechnology intellectual property portfolio creation, strategy, and counseling.
  • [Senior Counsel Specialist] 10+ years of experience in pharma, biopharma or biotechnology intellectual property portfolio creation, strategy, and counseling.
  • For more senior roles, preferably includes 3+ years of experience in a pharmaceutical, biopharmaceutical, or biotechnology corporation.
  • An advanced degree in biological sciences, chemistry or other area relevant to pharmaceutical or biopharmaceutical IP practice. A Ph.D. is a plus.
  • Admission to practice before the U.S. Patent and Trademark Office.
  • A United States law degree (JD) with a current good standing admission to at least one US state bar is preferred.

Roche is an equal opportunity employer.

Legal, Legal > Licensing, Patents, Trademarks

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