Intellectual Property Counsel Job Description
[Insert company name here] is an established and successful law firm specializing in [insert key areas of focus here]
We’re looking for an Intellectual Property Counsel to handle matters such as patents, copyright, trademark law, licensing, franchising, distribution, technology transfers, and trade secret projects.
Roles & Responsibilities
Responsibilities include, but are not limited to:
- Manage, protect and expand the Company’s patent portfolio, including proactively identifying and developing patentable intellectual property and working closely with internal clients and/or outside counsel to prepare, file, and prosecute related patent applications.
- Counsel internal clients, including management and members of the R&D, technical operations, and corporate development teams, on IP risks and opportunities.
- Review and assist in the drafting and/or negotiation of nondisclosure, research, license, and other agreements involving the use, transfer, or ownership of intellectual property.
- Assess and advise on IP risks and opportunities in complex transactions.
- Work with the scientific staff to seek IP protection for clinical and later-stage developments that may extend the exclusivity period for company products.
- Provide IP due diligence support for corporate development activities and manage patentability, freedom-to-operate, infringement, validity, and regulatory exclusivity analyses.
- Provide support for adversarial proceedings involving company technology or products, including IP litigation, European oppositions, and/or [insert name of country] post-grant proceedings.
- Develop a deep knowledge of the Company’s existing and planned research and development programs, business activities, and product candidates in the context of competitor activities, industry trends, best practices, laws, and regulations affecting IP.
- Train internal client groups to promote awareness of IP and its implications on various functions within the organization.
- A minimum of [insert number] years relevant professional experience in a law firm and/or in-house setting, with experience in the pharmaceutical, life science, and/or biotechnology industry highly preferred.
- Significant small and/or large molecule patent preparation and prosecution experience, including familiarity with both [insert name of country] and-[insert name of country] IP rules, regulations, and practices.
- Knowledge of the role of an IP strategy in life cycle management.
- Ability to approach IP creation and protection with a strategic mindset by anticipating future business, competitive and legal risks, and opportunities and offering creative solutions.
- Experience in drafting and negotiating IP terms in business transactions required.
- Experience with collaborations, consortia, and license agreements is strongly preferred.
- Strong business acumen and the ability to creatively resolve business issues.
- Ability to manage outside counsel and other external resources for quality work product, value, and efficiency.
- Ability to communicate effectively, both orally and in writing
- Flexibility, willingness, and ability to take on diverse tasks.
- Ability to facilitate and contribute to collaborative decision-making processes and work effectively on cross-functional teams.
- Required/Preferred Education and Licenses
- A Juris Doctorate from an accredited law school.
- Admission to practice before a state bar.
- Admission to practice before the [insert name of country] Patent and Trademark Office.
What you’ll get in return
The firm offers a generous benefits package along with compensation based on experience level and client orientation.
- Competitive compensation based on experience
- Medical insurance plan
- Dental insurance plan
- Vision insurance plan
- Contribution to life insurance plan
- 401k profit sharing
- Parking reimbursement
- Social, charity, and wellness events
To apply for the role or have a confidential discussion, contact us on [insert recruiter email address] or [insert recruiter phone number]