Patent Counsel / Patent Agent Job Description
We are looking for someone who can work 20-40 hours a week on a 1-year assignment. This is fully remote but supporting team in San Francisco.
Position Scope and Key Responsibilities:
- Strategic IP procurement and management of global intellectual property rights for individual small molecule (pharmaceutical) and/or large molecule (biopharma or biotechnology, including antibodies, gene therapy and other modalities) candidates and products or technology innovation (e.g., research tools, assays, manufacturing improvements)
- Drafting & prosecuting patent portfolios, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies.
- Excels in working independently and proactively with minimal direction, and strong organizational skills.
Specific Daily Responsibilities & Associated Skill Sets may include:
- Designing & delivering impactful global IP portfolios from invention capture to patent issuance and beyond for individual small molecule (pharmaceutical) and/or large molecule (biopharma or biotechnology, including antibodies, gene therapy and other modalities) candidates and products.
- Managing and prosecuting active global dockets, including drafting and handling U.S. and foreign patent applications.
- Rendering freedom-to-operate, infringement and validity analyses, risk evaluation, and mitigation strategies for individual program molecules, technologies, and tools.
- Identifying and exploiting new strategic opportunities & approaches leveraging a deep understanding of patent law.
- Maintaining and sharing expertise and knowledge on legal case law, rules, and regulations before the US Patent & Trademark Office as well as other relevant jurisdictional IP offices
Demonstrated experience and track record of success in:
- Building & leveraging global IP portfolios for small molecule pharmaceuticals and/or large molecule (biopharma or biotechnology, including antibodies, gene therapy and other modalities) products at all stages of prosecution.
- Designing and executing complex freedom to operate analyses across different technologies and different jurisdictions, developing and communication actionable risk mitigation strategies.
- Experience with IP transactions and due diligence is a plus.
- 7+ years of experience in pharmaceutical and/or biopharma/biotechnology intellectual property portfolio creation, strategy, and counseling.
- Preferably prior experience in a pharmaceutical corporation.
- An advanced degree in an area relevant to pharmaceutical IP practice. A Ph.D. is highly desired.
- For attorneys, a United States law degree (JD) with a current “good standing” admission to at least one US state bar.
- Admission to practice before the U.S. Patent and Trademark Office.