Associate General Counsel-IP Due Diligence
About The Position
AbbVie is searching for an in-house Associate General Counsel for our IP Due Diligence group, part of AbbVie’s Intellectual Property, Transactions, and Innovation legal team. This position will support AbbVie's business development activities, including mergers and acquisitions, licensing deals, option agreements, and venture transactions, and will be based in our offices in North Chicago, IL, Waltham, MA, South San Francisco, CA, or Irvine, CA with a hybrid work model (on site 3+ days/week). Acting individually and in cross-functional teams, the Associate General Counsel will lead and execute IP due diligence for business development transactions, assess intellectual property risk and opportunity across AbbVie's pipeline and target portfolios, and provide strategic IP counsel in support of AbbVie's M&A, licensing, option, and venture activities.
Requirements
- JD degree from an accredited law school, active state bar admission enabling in-house practice (specific state not required), and registration to practice before the USPTO as a patent attorney
- ~8 years of experience practicing patent law as a patent attorney at a law firm and/or life sciences company, with substantial experience conducting IP due diligence in a pharmaceutical or biotechnology context
- Prior due diligence experience in simple biologics, complex biologics, peptides, and other small molecule pharmaceuticals
- Experience with biosimilars or generics portfolios
- Technical background relevant for pharmaceutical IP due diligence, such as: Experience with small molecule and/or biological pharmaceutical discovery & development, and/or Technical degree in a relevant field, such as molecular biology, biotechnology, biochemistry, biology, chemistry, chemical engineering, or biomedical engineering
- Strong legal, analytical, communication, collaboration, and people skills
- Demonstrated ability to manage complex projects to meet deadlines
Nice To Haves
- Prior pharma or biotech due diligence experience in M&A, licensing, or option deal transactions
- Experience with biosimilars or generic pharmaceutical patent portfolios
- Experience advising on venture transactions or strategic collaborations with IP components
Responsibilities
- Lead and execute comprehensive IP due diligence for M&A, licensing, option, and venture transactions, assessing patent coverage, freedom-to-operate, validity, enforceability, and competitive landscape
- Provide legal advice and counsel to cross-functional business development, R&D, and commercial teams on IP matters arising in the context of transactions and strategic partnerships
- Analyze and assess third-party patent portfolios and competitive landscapes, including claim scope, prosecution history, litigation exposure, and conduct patent landscaping across counterparty portfolios or various mechanisms-of-action to identify strategic risks, white-space opportunities, and competitive intelligence insights in support of transaction structuring and risk mitigation
- Prepare and present clear, actionable due diligence reports and risk assessments to senior legal, business, and scientific stakeholders
- Partner with external counsel and internal scientific teams to conduct prior art searches, validity assessments, and freedom-to-operate analyses in support of transaction due diligence
- Lead and support negotiations in connection with licensing, M&A, option, and venture transactions, working closely with business development and legal colleagues
- Build and manage productive relationships with science, evaluation, and business development teams to ensure IP considerations are integrated throughout the deal lifecycle
- Interact regularly with IP team leadership to provide updates on transaction diligence activities, escalate key risks, and align on IP strategy
- Participate in technology assessment and cross-functional teams supporting R&D external opportunity diligence, evaluating the IP implications of in-licensing, co-development, and acquisition targets
- Support and, where appropriate, manage patent prosecution activities across a range of modalities, including complex and simple biologics, peptides, small molecule pharmaceuticals, or device-related inventions, coordinating with outside counsel and internal R&D teams to develop and execute prosecution strategies aligned with business objectives
Benefits
- paid time off (vacation, holidays, sick)
- medical/dental/vision insurance
- 401(k)
- long-term incentive programs
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What This Job Offers
Job Type
Full-time
Career Level
Mid Level
Education Level
Ph.D. or professional degree
