Counsel - Patents

Role Summary

Bristol Myers Squibb (BMS) is seeking an experienced patent attorney or agent to join our headquarters in Princeton, New Jersey, or one of our research centers in Cambridge, MA, or San Diego, CA. The patent practitioner will support clients across multiple functional areas to provide strategic counsel to key stakeholders. Responsibilities will primarily include internal preparation and prosecution of patents as well as providing strategic counsel, including freedom to operate, business development diligences, and client counseling.

Responsibilities

• Prepare and prosecute patent applications, including drafting, filing, and managing responses to office actions on a global level.
• Conduct freedom-to-operate analyses and provide strategic counsel on patentability and infringement issues.
• Manage patent portfolios, including conducting patent landscape analyses and developing patent strategies to protect BMS's innovations.
• Provide due diligence support for business development activities, including evaluating IP portfolios of potential partners and acquisition targets.
• Draft and negotiate license and research collaboration agreements.
• Manage relationships with outside counsel to ensure high-quality and cost-effective legal services.
• Regularly engage with business and technical teams to provide IP-related guidance and support.
• Stay updated on changes in patent laws and regulations and ensure compliance with all relevant legal requirements.

Qualifications

• Registered to practice before the USPTO.
• J.D. degree is preferred, but not required.
• 7-10 years of patent law experience in the pharmaceutical/biotechnology industry.
• Bachelor's degree or equivalent in chemistry, biochemistry, or pharmaceutical sciences. An advanced degree and/or scientific research experience is preferred.
• Excellent analytical, written, and verbal communication skills.
• Service-oriented focus with the ability to work as part of cross-functional teams and drive results.
• Highest integrity, excellent judgment, and the ability to proactively recognize and effectively assess business risk and communicate legal issues to patent, legal, and key stakeholders.

Skills

• Patent prosecution and portfolio management
• Strategic IP counseling
• Freedom-to-operate analyses
• Due diligence for business development
• License and collaboration agreement drafting and negotiation
• Collaboration with internal teams and outside counsel

Education

• J.D. degree (preferred, not required);
• Bachelor's degree in chemistry, biochemistry, or pharmaceutical sciences; advanced degree preferred.

Additional Requirements

• Location: Princeton, NJ; Cambridge, MA; or San Diego, CA.