Our client, a publicly traded pharmaceutical company in New York, is seeking an experienced patent attorney. The attorney will help manage patent administrative actions, including inter partes review and post grant review petitions, by developing assisting outside legal counsel in preparing, filing, and prosecuting these administrative actions, including preparing and deposing expert witnesses, and managing discovery and oral hearings. The attorney will also assist in patent strategy and procurement for the company’s platform technologies, including genetically-modified mouse disease models and gene analysis technologies that support the company’s preclinical and clinical pipelines. Further, the attorney will monitor and advise on emerging legal issues, particularly in the area of patent administrative actions, including legislative and rule-making developments, and case law developments from the courts and the U.S. Patent Office Patent Trial and Appeal Board.
Sample responsibilities will include:
-Managing the preparation, filing, and prosecution of patent administrative actions, including inter partes review and post grant review petitions.
-Reviewing and revising drafts of petitions, declarations, and disclosures prepared by outside counsel and expert witnesses
-Overseeing the filing of patent administrative actions
-Working with outside legal counsel to draft reply to patent owner response and opposition to proposed claim amendments
-Overseeing the preparation and deposition of expert witnesses
-Attend oral hearings at the U.S. Patent Office Patent Trial and Appeal Board
-Apprise management and relevant business groups regarding developments throughout the proceedings
-Assisting in patent procurement for various platform technologies, including genetically-modified mouse disease models and gene analysis/bioinformatics technologies.
-Developing close relationships with scientists and research group leaders, and working with these individuals to identify new inventions and devise a patent procurement strategy
-Working with outside legal counsel to draft patent applications and responses to office actions
-Keeping abreast of rule-making and legislative developments, as well as case law developments from the courts U.S. Patent Office Patent Trial and Appeal Board.
-Developing close relationships with scientific and business groups in various core research areas (e.g., manufacturing, genetics/bioinformatics, mouse disease models, antibody-producing mice, immunotherapy, etc.), and understanding preclinical and clinical research and development objectives.
-Devising strategy for filing of patent administrative actions and advising management and relevant business groups of strategy, risks, and possible outcomes.
• Exceptional analytical skills and communication skills, including presentation, interpersonal, and conflict resolution.
• Ability to think creatively.
• Refined legal and persuasive writing skills required.
• Ability to independently oversee legal matters, manage the use of outside legal counsel and work collaboratively with colleagues.
• Ability to manage aggressive deadlines, handle multiple complex legal matters and see projects through to conclusion.
Education and Experience:
• Juris Doctorate and admitted to practice law in at least one state, preferably NY.
• Registered to practice before the U.S. Patent and Trademark Office.
• Ph.D. in Immunology, Biochemistry, Cell Biology, Molecular Biology, Genetics or related discipline is required.
• Minimum of 6 years of law firm, or pharmaceutical or biopharmaceutical corporate practice experience is required; litigation experience a plus.
• Experience in drafting inter partes review (or post grant review) petitions, filing inter partes review petitions, and participation in discovery and oral proceedings before the U.S. Patent Office Patent and Trial Appeal Board is required.
• Experience in patent preparation and prosecution is required, preferably in the areas of recombineering, transgenic mice, and/or genetics