Senior Patent Counsel/Agent (Large Molecule), OMNI IP Group
Company: F. Hoffmann-La Roche Gruppe
Location: San Francisco
Posted on: November 14, 2024
Job Description:
The PositionGenentech's Intellectual Property team is seeking a
senior level patent counsel/agent (large molecule) whose passion
lies in creating and leveraging game-changing IP strategies that
enable Genentech to do now what patients need next. As a key
business partner and strategist, this individual will be pushing
the boundaries of what is possible in a highly competitive
industry. This position reports directly to the Director and
Assistant General Counsel, Neuroscience & Ophthalmology IP Lead in
the Genentech Legal Department, and is based at our South San
Francisco campus.A hybrid working schedule of 3 days per week
onsite is required. This position is not suitable for a
fully-remote working arrangement. Relocation benefits are not
available for this job posting.KEY RESPONSIBILITIES:Key
responsibilities of this individual contributor role will include
but not be limited to the following:Managing Docket (Patent
Preparation & Prosecution)
- Driving strategic IP procurement and management of global
intellectual property rights for individual large molecule
(biopharmaceutical) candidates and products including drafting and
prosecuting patent portfolios, licensing transactions, due
diligence assessments, freedom-to-operate, infringement and
validity analyses, and risk evaluation and mitigation
strategies.
- Managing and prosecuting active global dockets, including
handling U.S. and foreign patent applications as well as post-grant
proceedings (e.g., reexamination, reissue, post-grant review),
including foreign oppositions and appeals, as they may arise.
- Rendering due diligence assessments, freedom-to-operate,
infringement and validity analyses, and risk evaluation and
mitigation strategies for individual program molecules,
technologies, tools and the like.
- 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 Genentech
franchises and portfolio.Providing Advice & Counsel
- Partnering effectively with 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.
- Influencing business leaders as a trusted advisor and thought
partner.
- Deploying in-depth patent and scientific expertise to provide
education, guidance, and advice on patent law issues to scientists
conducting research and other business stakeholders.
- Maintaining and sharing expertise and knowledge on legal case
law, rules, or regulations before the U.S. Patent & Trademark
Office as well as other relevant jurisdictional IP
offices.Collaborating, Managing, & Supporting Teams
- Partnering in all intellectual property-related transactions,
adverse proceedings, and litigation activities related to
individual's program responsibilities.
- Participating 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 practices and execution for all aspects of IP
portfolios in a high performing, agile team setting.
- Sustainably building enduring, productive external
relationships with outside counsel, third-party collaborators, and
partners.
- Ensuring that Genentech remains a great place to practice
game-changing IP law, have fun, and make a difference for
patients!GENERAL COMPETENCIES:Key competencies of this individual
contributor role include, but are not limited to the
following:
- Respects and fosters a team and organizational culture that
reflects a commitment to diversity, equity, inclusion, and
community.
- Exhibits poise under pressure, solution-oriented mindset, clear
communication at all levels of an organization, effective
collaboration across local and global teams, and active in-person
presence with IP/Legal and business stakeholders.
- Tackles new challenges with curiosity and a growth-mindset,
effectively utilizing available resources, and an enthusiastic
willingness to listen and learn from others.
- Excels in working independently and proactively with minimal
direction, strong organizational skills, and ability to prioritize
and balance competing projects and responsibilities in a fast-paced
and diverse global organization.QUALIFICATIONS:
- 7+ years of patent attorney/agent experience in life sciences
patent prosecution, with majority of experience in patent
application drafting and prosecution in a pharma/biotech corporate
setting and/or representing such clients/matters in a law
firm.
- Admission to practice before the U.S. Patent and Trademark
Office (USPTO) required.
- A U.S. law degree (J.D.) and a current "good standing"
admission to at least one U.S. state bar is required for attorney
applicants.
- An advanced degree in biological sciences such as biochemistry,
molecular biology, or other area relevant to biopharmaceutical IP
practice. A Ph.D. is highly desired.
- Demonstrated experience and track record of success in:
- Building and leveraging global IP portfolios for large molecule
biopharmaceuticals 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 in IP transactions and due diligence is a plus;
- Experience in adverse IP proceedings, including but not limited
to US litigation, is a plus;
- Experience with small molecule global IP portfolios at all
stages of prosecution and enforcement is a plus;
- Experience in gene therapy, cell therapy, and RNA therapeutics
is a plus.The expected salary range for this position based on the
primary location of California is $207,600 - $385,600 (patent
counsel) or $180,300 - $334,900 (patent agent). Actual pay will be
determined based on experience, qualifications, geographic
location, and other job-related factors permitted by law. A
discretionary annual bonus may be available based on individual and
Company performance. This position also qualifies for the benefits
detailed at the link provided below.
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Keywords: F. Hoffmann-La Roche Gruppe, Novato , Senior Patent Counsel/Agent (Large Molecule), OMNI IP Group, Legal , San Francisco, California
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