Counsel, Patent Prosecution - Aesthetics & Eyecare

Role Summary

Counsel, Patent Prosecution - Aesthetics & Eyecare. In-house counsel supporting AbbVie's Patent Prosecution group within the Intellectual Property, Transactions, and Innovation legal team, focused on developing and implementing IP strategies for Aesthetics, Eyecare, and pharmaceutical products with a hybrid work model in North Chicago.

Responsibilities

• Maximize AbbVie’s competitive position through creation and implementation of intellectual property strategies
• Provide legal advice and counsel to cross-functional R&D and business teams on a variety of IP-related matters
• Draft, file, and prosecute strategically useful patent applications worldwide both directly and through management of outside counsel
• Challenge and defend patents in IPR, opposition, interference, and other post-grant proceedings
• Conduct prior art searches, analyze third-party patent positions, and conduct due diligence to support business development activities

Qualifications

• JD degree from an accredited law school, state bar admission enabling in-house practice (specific state not required), and registration to practice before the USPTO
• 3+ years of experience practicing patent law as an attorney at a law firm and/or life sciences or medical aesthetics company, including substantial U.S. and foreign patent prosecution
• Experience with India, China, and emerging markets a plus
• Technical background relevant for pharmaceutical and medical aesthetic patent prosecution, such as:
  • Experience with small molecule, biological pharmaceutical, and/or medical aesthetics discovery & development, and/or
  • Technical degree in relevant field, such as biomedical engineering, biotechnology, biochemistry, biology, chemistry, chemical engineering, or molecular biology
• Strong legal, analytical, communication, collaboration, and people skills
• Demonstrated ability to manage complex projects to meet deadlines

Skills

• Patent prosecution
• IP strategy development
• Legal advising to R&D and business teams
• External counsel management
• Due diligence and competitive patent landscape analysis

Education

• Juris Doctor (JD) from an accredited law school