Patent Attorney II

Role Summary

Patent Attorney II responsible for performing, managing, directing, and leveraging designated patent and related IP activities within the Novartis R&D organization. Location: Cambridge, MA, United States.

Responsibilities

• Provide clear, informed and sophisticated counseling to Novartis R&D clients on opportunities to protect their inventions, create IP portfolios, advise on publication strategies, and mitigate third party risks.
• Build and manage patent portfolios for Novartis R&D projects by identifying inventions and preparing, prosecuting, maintaining, and defending patent filings for them, especially in technical areas related to new chemical entities, processes, platforms, and technologies, as well as clinical developments.
• Render legal opinions with respect to patentability, validity, and freedom to operate, and formulate patent strategies for Novartis R&D clients that secure IP positions, freedom-to-operate (FTO), and enable IP defense(s).
• Apply deep expertise in national patent law and practice, including patent trends and case law developments, to devise patent strategies and advice.
• Understand other forms of protection relating to exclusivity, and apply as required.
• Maximize effective communication with colleagues and leadership in the legal and IP function as well as the R&D organization.
• Build and manage external relationships with outside counsel and collaborators, including substantial interactions within a multicultural global patent function.
• Conduct due diligence assessments and counsel based on these assessments, including FTO, infringement and validity analyses, and risk evaluation and mitigation.
• Provide IP support for transactional projects, such as research collaborations and in-licensing opportunities, including advice on contract drafting and negotiation.
• Perform timely review of publication requests.
• Deliver work results on-time, on-target, and within budget.
• Continue professional development and contribute to development of IP colleagues.

Qualifications

• Required: J.D. degree with admission to at least one state bar and registered to practice before US Patent Office.
• Required: Bachelor’s degree in chemistry or equivalent plus 1–2 years exposure to drug discovery and development processes utilized at pharmaceutical and/or biotechnology companies.
• Preferred: MS/PhD, or equivalent, in chemistry.
• Experience: 7+ years’ experience as a qualified patent attorney in a law firm or in the pharmaceutical or biotechnology industry.
• Experience: Strong scientific background in chemical sciences; preferably including direct lab experience.
• Experience: Expertise in local (US) and PCT law, filing process and prosecution practice; detailed understanding of counterpart European patent law and other major global patent systems.
• Experience: Strong customer-service experience and focus to build and sustain effective partnerships with key stakeholders and project teams.
• Experience: Experience integrating global outlook and management of product lifecycle into decision-making process.

Skills

• Effective analytical, presentation, and communication skills
• Demonstrated ability to work both independently and collaboratively in a team
• Well-developed research and critical thinking skills, and sound decision-making abilities, with attention to detail to produce consistently accurate work
• Strong organization and time management skills with flexibility, creativity, resourcefulness to successfully prioritize and manage multiple, competing priorities simultaneously
• Strong interpersonal skills (partnership, influence/persuasion, teamwork)

Education

• J.D. degree with admission to at least one state bar and registration to practice before US Patent Office (required).
• Bachelor’s degree in chemistry or equivalent (required).
• MS/PhD, or equivalent, in chemistry (preferred).