Associate Director, Patent Counsel

POSITION ID: PATENT 1143
CATEGORY:
PRACTICE AREA: , , ,
LOCATION: New York
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Our client, a publicly traded pharmaceutical company in New York, is seeking a patent attorney at the Associate Director level to help in the development, protection, and management of the company’s valuable intellectual property pertaining to bioprocess and manufacturing. The patent attorney will be responsible for patent activities relating to bioprocessing at all stages of the development pipeline including cell line technologies, purification, formulations, and media development. The patent attorney will be required to develop close client relationships with the relevant scientific and business groups and coordinate patent filings, trade secret protection, and administrative patent actions.

The patent attorney will also advise on emerging legal issues, including monitoring and reviewing case law and legislative developments, and is expected to contribute to administrative and legal projects intended to develop an IP Department displaying the highest legal and ethical standards.

Responsibilities:

• Identifying and capturing new inventions relating to bioprocessing;
• Preparing and prosecuting global patent applications relating to all aspects of bioprocessing, including biologic processes, manufacturing, formulation, packaging and delivery;
• Managing outside counsel on various projects as appropriate;
• Conducting patent landscape overviews, freedom-to-operate analyses, validity assessments and patentability assessments in relation to the company’s pipeline products, and communicating the results and analyses to senior members of the Law Department and other company senior management personnel;
• Managing US and foreign administrative patent actions (e.g., oppositions, third party observations, and inter partes reviews.);
• Assisting in litigation activities as needed;
• Supporting due diligence projects, agreements and transactional work, administrative initiatives, and policy questions

Requirements:

• Ph.D. in the life sciences (e.g., molecular biology, cell biology, biochemistry or related disciplines) is required;
• Juris Doctorate from an accredited law school;
• Admitted to practice before the USPTO and licensed to practice law in at least one state (member of the NY bar or eligible for in-house licensure in NY);
• 4-8 years of experience in a law firm setting (with or without corporate law department experience) preparing and prosecuting patent applications in the biological arts;
• Strong organizational skills and ability to manage multiple projects and competing priorities;
• Ability to manage a large and complex docket with minimal supervision;
• Exceptional communication skills, including presentation, interpersonal, writing and conflict resolution.

Salary commensurate with experience. Bonus and equity eligible position.

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