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| Job Title | Corporate Counsel, Patent | ||
| Location | Cambridge, MA | ||
| Job Type | Full-Time Regular | ||
| Min Experience | 7 Years | ||
| Job Description | Profile Responsibilities: Patent Filing and Prosecution: Creates the culture, forums and collaborative processes to identify and evaluate potential IP opportunities and encourages the creation and protection of IP to ensure long-term competitive advantage. Oversees all aspects of patent application preparation and prosecution for multiple Research & Development projects including identification of new inventions, patentability and FTO searching, lifecycle management and integration of acquired/licensed patent portfolios. Manages and directs relationships with outside counsel, including patent prosecution/assessment and assessment of infringement claims and provides support for patent litigation. Collaboratively manages IP aspects of company’s alliance partnerships, effectively monitoring, guiding and reporting on alliance-related IP development. Counseling/Collaboration: Provides high quality legal advice to clients, including management, regarding the company’s Intellectual Property. Effectively advises relevant management and project teams on material strategic and tactical IP matters and how to manage risks. Provides counseling and training to the Research & Development organization on key legal/compliance topics, in coordination with other members of the legal team. Collaborates with IP colleagues to develop and implement “best IP practices” within the department and organization as a whole. Business Development: Participates in assigned due diligence evaluations, performed internally and in partnership with external resources, and evaluates and reports on IP risks attendant to the contemplated transaction, as appropriate. Collaborates with business development to negotiate and draft agreements in execution of the company’s corporate transaction and alliance management strategies. Confirms that assumptions relating to exclusivity and overall IP strength are accurate and consistent in financial models prior to contemplated transaction.Qualification and Experience Qualifications: JD Degree admitted to practice law in at least one state, preferably Massachusetts. Admitted to practice before US Patent Office. Graduate degree in Organic Chemistry, Pharmacology or Biochemistry, or industrial laboratory experience preferred. Undergraduate degree in Chemistry, Biochemistry, or Biology required. Law firm and pharmaceutical corporate practice experience required, with 7+ years experience. Experience with both small molecules and biologics preferred. Experience in patent preparation and prosecution, licensing and negotiation, mergers and acquisitions and due diligence, litigation, strategic client counseling. Strong patent prosecution professional. Ability to make strategic decisions relating to the company’s overall vision and objectives. Strong presentation skills and ability to explain complex legal and technical issues simply and clearly to laypeople. Strong desire to proactively engage with clients. Good contract negotiation and drafting skills. | ||
| Practice Areas | Intellectual Property | ||
| Industry | Technology/High Tech | ||
| Category | Senior Counsel | ||