Patent Counsel/Patent Agent (Small Molecule), O...

Description:

The Position:
An American Biotechnology Corporation's Intellectual Property team is seeking a Patent Counsel/Patent Agent (Small Molecule, Oncology) whose passion lies in creating and leveraging game-changing IP strategies that enable Roche and Genentech to “do now what patients need next.” As a key partner and business strategist, this individual will push the boundaries of what is possible in a highly competitive industry. This position reports directly to the Director and Assistant General Counsel of the Small Molecule Oncology IP Practice Group in An American Biotechnology Corporation's Legal Department and will be located in our South San Francisco campus.

A hybrid working schedule of 3 days weekly onsite is required. This position is not suitable for a fully remote working arrangement.

Relocation benefits are not available for this posting.

Key Responsibilities:
Key responsibilities of this individual contributor role will include but not be limited to the following:

• Designing and delivering impactful global IP portfolios from invention capture to patent issuance and beyond for individual small molecule (pharmaceutical) candidates and products. Managing active global dockets, drafting and prosecuting U.S. and foreign patent applications, handling appeals and post-grant proceedings (such as reexamination, reissue, post-grant review and foreign oppositions) as they may arise, and supporting licensing transactions.
• Rendering due diligence assessments, freedom-to-operate, infringement and validity analyses, risk evaluation, and mitigation strategies for individual program molecules, technologies, and tools.
• Partnering in all intellectual property-related transactions, adverse proceedings, and litigation activities related to individual's program responsibilities.
• Building effective relationships with, and providing in-depth patent and scientific expertise, education, guidance and advice to, relevant stakeholders at all levels of the global organization and across all phases of research, drug development and commercialization to provide clear, strategic business-enabling strategies.
• Identifying and exploiting new strategic opportunities and approaches by leveraging a deep understanding of patent law and a knowledge of the competitive landscape across the An American Biotechnology Corporation franchises and portfolio.
• Maintaining and sharing expertise and knowledge on legal case law, rules, and regulations before the US Patent and Trademark Office as well as IP offices in other relevant jurisdictions.
• Sustainably building external relationships with outside counsel and third party collaborators and partners.
• Ensuring that An American Biotechnology Corporation  remains a great place to practice game-changing IP law and meet the challenges of bringing great medicines to patients.

Competencies:
Key competencies of this individual contributor role include, but are not limited to, the following:

• Embraces a growth-mindset and enjoys work in a fast-paced and diverse global organization.
• Excels in working independently and proactively with minimal direction, strong organizational skills, and ability to prioritize and balance competing projects and responsibilities.
• Engages as an active participant in Group, Department, and cross-functional projects and initiatives where strategies, processes, operating standards and/or practices are developed and deployed, to ensure highest quality IP portfolios in a high performing, agile team setting.
• Embraces and fosters a team and organizational culture that reflects a commitment to diversity, equity, inclusion, and community.
• Acts with poise under pressure, a solution-oriented mindset, clear communication at all levels throughout the organization, tackling new challenges with curiosity, effectively utilizing available resources, and an openness to listen and learn from others.
• Embraces agility and welcomes iteration as tools of continuous improvement – both personally and within and across all aspects of high performing teamwork.

Qualifications:

• 5+ years of experience in small molecule (pharmaceutical) intellectual property portfolio creation, strategy, and counseling, which ideally includes 2+ years of experience in a pharmaceutical/biotech corporation.
• An advanced degree (ideally a Ph.D) in chemical sciences such as chemistry, organic chemistry or other areas relevant to pharmaceutical IP practice.
• A United States law degree (JD) with, for Patent Counsel applicants, a current “good standing” admission to at least one US state bar.
• Admission to practice before the U.S. Patent and Trademark Office, for both Patent Counsel and Patent Agent applicants.
• Demonstrated experience and track record of success in:
• Building and leveraging global IP portfolios for small molecule pharmaceuticals at all stages of prosecution and enforcement;
• Designing and executing complex freedom-to-operate analyses across different technologies and different jurisdictions; developing and communicating actionable risk mitigation strategies;
• Experience with IP transactions and due diligence is a plus;
• Experience in adverse IP proceedings including but not limited to US litigation, is a plus;
• Besides depth of primary experience in small molecule pharmaceuticals, experience also with building and leveraging large molecule global IP portfolios (such as biopharma or biotechnology, including antibodies, gene therapy and other modalities) at all stages of prosecution and enforcement is a plus.

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