IP Attorney

Role Summary

The IP Attorney will support the strategic direction and management of the company’s intellectual property estate, help strengthen the patent portfolio, and ensure alignment with research, development, manufacturing, and clinical programs. Primary duties include drafting and reviewing IP provisions in company contracts, assisting with patent and trademark filings, and providing IP analysis for due diligence and risk assessment. The role requires strong IP transactional experience and close collaboration across research, development, manufacturing, and business functions.

Responsibilities

• Assist the intellectual property function within the Legal Department and provide strategic direction and management of the intellectual property estate of the company.
• Review and advise on intellectual property provisions in contracts, including clinical trial agreements, ISTs, collaboration and development agreements, license agreements, sponsored research agreements, technology transfer agreements, materials transfer agreements, master services agreements and related work orders.
• Work closely with internal scientists/researchers/licensors for patent protection of new technology, including preparation of patent applications, amendments, responses to office actions, declarations, and other submissions to patent offices.
• Instruct outside counsel on the preparation, filing, prosecution, and maintenance of patents/patent applications and trademark applications/registrations for the company.
• Draft patent applications and claim sets.
• Conduct FTO and patentability searches.
• Identify, assess and make IP recommendations as to inventions.
• Proactively identify and resolve IP issues (including patent infringement risk) that may affect the company.
• Work with external licensors/partners to coordinate filing, prosecution, maintenance of patents/patent applications and trademark applications/registrations or other IP issues relating to partnerships.
• Prepare opinions on validity and non-infringement of third-party patents and advise management on such issues.
• Assist with managing outside counsel on IP strategy in interference, opposition, re-exam, inter partes review or post-grant review proceedings.
• Work with internal stakeholders and external partners to provide IP/Legal review/clearance on abstracts, presentations, manuscripts prior to submission or presentation.
• Develop strong working relationships with functional groups and project teams.
• Perform IP analysis in support of due diligence projects and advise management on patent and other IP issues.
• Provide IP advice in support of Business Development and other functional groups.
• Proactively develop and implement approaches to enhance efficiency and cost savings related to IP administration.
• Oversee patent docketing and annuity/maintenance fees.

Qualifications

• Required: Presently admitted to practice law in at least one US jurisdiction and licensed to represent clients in patent matters before the USPTO; in good standing in each state and in the USPTO; no discipline issues on record.
• Required: Doctor of Jurisprudence (J.D.) degree from an accredited U.S. institution.
• Required: A bachelor‚Äôs degree in immunology, molecular biology, biochemistry, or the equivalent; advanced degree (e.g., Ph.D. or master's) or 5+ years of equivalent research experience strongly preferred.
• Required: Minimum of 4+ years of experience as a patent attorney (in-house or combined with law firm); biotechnology industry experience required.
• Required: Expertise in drafting, reviewing, and negotiating IP provisions of contracts.
• Required: Experience drafting and prosecuting biotechnology patent applications, preferably antibody patent applications.
• Required: Strong collaborative skills and ability to build partnerships internally and with external partners; excellent critical thinking and the ability to analyze scientific data.
• Required: Ability to work on-site at a company office location 4 days per week; fully remote work available for exceptionally qualified candidates outside commuting distance.

• Preferred: Experienced in conducting FTO and patentability searches.
• Preferred: Post-grant and inter partes review experience and/or IP litigation or opposition experience.
• Preferred: Familiarity with Patsnap, Derwent Innovation, or other similar patent database search platforms.