Chief US Counsel, Intellectual Property

POSITION ID: CHFCNSLIP 1436
CATEGORY:
PRACTICE AREA: , , ,
LOCATION: New Jersey

Princeton Legal Search Group has been retained on an exclusive basis by a global life sciences company to lead the search for an experienced attorney for the position of Chief US Counsel, Intellectual Property. US Headquarters are in New Jersey and while local candidates are preferred, the Company will consider remote arrangements with periodic monthly travel to New Jersey for attorneys living on the East Coast of the United States. By possessing a robust knowledge and experience in a variety of intellectual property facets with primary focus on US patent law, you will be responsible for supporting all aspects of the Company’s intellectual property portfolio, including patents and trade secrets. In addition to being the lead IP attorney for US matters, this role is responsible for assisting with worldwide prosecution including PCT and European patent prosecution, as well as docketing pertinent information for the worldwide portfolio.

ESSENTIAL DUTIES AND RESPONSIBILITIES include the following:

  • Serve as trusted counsel on intellectual property issues by giving solid and practical legal advice and counsel with main focus on US matters.
  • Promote strategic development and maintenance of the patent portfolio worldwide by either drafting and prosecuting patent applications and/or by overseeing outside counsel.
  • Provide strategic counseling, and work with outside counsel, on all facets of intellectual property law, including policies and practices, patent assessments (e.g. patentability, freedom to operate, validity, enforcement), inventorship, and business development transactions.
  • Assist with drafting, reviewing and negotiating the intellectual property provisions of research and development, collaboration, confidentiality, material transfer and license agreements and of other contractual documents (e.g. manufacturing, packaging, pharmaceutical development, supply, and master service agreements).
  • Provide strategic counseling and experienced support with intellectual property litigation as needed.
  • Assist with the development and implementation of business unit IP strategies and processes
  • Conduct and/or coordinate IP related due diligences in connection with a range of strategic transactions
  • Manage invention disclosures and portfolios, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and invention review team meetings.
  • Review presentations, scientific publications and marketing materials for IP compliance.
  • Oversee and manage a patent paralegal.

EDUCATION and/or EXPERIENCE REQUIRED

  • Registered to practice before the USPTO.
  • J.D. degree or equivalent and admission to at least one state bar.
  • Bachelor’s degree or equivalent in the pharmaceutical sciences sector, preferably chemistry, chemical engineering or biochemistry. An advanced degree and/or scientific research experience is preferred.
  • Excellent analytical, written and verbal communication skills.
  • Highest integrity, excellent judgment and the ability to proactively recognize and effectively assess business opportunities and risks and communicate legal issues to patent, legal and general management.
  • 10 or more years of patent law experience in the pharmaceutical field, or an equivalent combination of patent law and pharmaceutical industry experience.
  • Ability to work as part of cross-functional teams and drive results.
  • Experience serving as a counselor to leadership teams with a proven ability to deliver and develop robust IP strategies in a proactive, objective and commercially oriented manner.
  • The successful candidate will have had experience preparing and prosecuting domestic and international patent applications in the pharmaceutical/biotech industry and providing patentability, validity, and infringement assessments, within a Corporation, Law Firm or Federal Agency.
  • Working knowledge of patent laws in major jurisdictions outside of the US is a plus.

Salary commensurate with experience. Bonus eligible and pension eligible position. Hybrid work model. Occasional international travel.

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