Senior Counsel - Intellectual Property & Strategy

Role Summary

Senior Counsel - Intellectual Property & Strategy. In-house counsel for AbbVie's Patent Prosecution group within the Intellectual Property, Transactions, and Innovation legal team. Develop and implement IP strategies for AbbVie’s products and product candidates; support pharmaceutical products with a hybrid work model and locations including Irvine, CA; South San Francisco, CA; North Chicago, IL; or Waltham, MA.

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 IP-related matters
• Draft, file, and prosecute strategically useful patent applications worldwide 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

• Required: 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
• Required: 5+ years of experience practicing patent law as an attorney or patent agent at a law firm and/or life sciences company, including substantial U.S. and foreign patent prosecution
• Preferred: Experience with India, China, and emerging markets
• Required: Technical background relevant for pharmaceutical patent prosecution, such as experience with small molecule and/or biological pharmaceutical discovery and development, and/or a technical degree in molecular biology, biotechnology, biochemistry, biology, chemistry, chemical engineering, or biomedical engineering
• Preferred: Medical device experience
• Required: Strong legal, analytical, communication, collaboration, and people skills
• Required: Demonstrated ability to manage complex projects to meet deadlines

Skills

• Intellectual property strategy development
• Patent prosecution and management of external counsel
• IP due diligence and competitive analysis
• Cross-functional collaboration and communication

Education

• Juris Doctor (JD) from an accredited law school

Additional Requirements

• Registration to practice before the USPTO