Legal: IP Legal Counsel

Nanobiosym•Cambridge, MA

11d

About The Position

The IP Attorney will play a critical role in the development and execution of the company's intellectual property strategy. This role requires a deep understanding of scientific principles, strong legal acumen in patent law, and extensive experience in drafting, prosecuting, and managing Physics, Biotech, Nanotechnology and AI related patents . The ideal candidate will hold a Ph.D. in a Physical science and or life sciences discipline and have at least 10+ years of IP law experience in a Hi-Tech sector.

Requirements

Juris Doctor (JD) from an accredited law school.
Admission to practice before the U.S. Patent and Trademark Office (USPTO) is required.
Ph.D. in a Physical Science and or Life sciences field.
Minimum of 10+ years of experience in patent law, with a strong focus on Hi-Technology and life sciences.
Proven track record in patent drafting, prosecution, and portfolio management .
Experience in IP due diligence, licensing agreements, and IP-related transactions.
Strong technical background with the ability to understand complex scientific concepts.
Excellent legal writing, analytical, and communication skills.
Ability to manage multiple projects and work effectively in a fast-paced, dynamic environment.

Nice To Haves

Experience with IP litigation, post-grant proceedings, or global patent strategies.
Prior in-house legal experience in a biotech or pharmaceutical company.
Familiarity with regulatory frameworks (e.g., FDA, EMA) as they relate to IP.

Responsibilities

Patent Drafting & Prosecution: Prepare, file, and prosecute U.S. and international patent applications, ensuring robust protection of the company's innovations.
IP Strategy Development: Design and implement comprehensive IP strategies aligned with the company's R&D and business objectives to maximize competitive advantage.
Portfolio Management: Oversee the global IP portfolio, including freedom-to-operate analyses, patentability assessments, and IP risk mitigation.
Cross-Functional Collaboration: Work closely with R&D, business development, and executive leadership to identify and protect key inventions.
Legal Counseling: Provide legal advice on IP-related matters, including licensing agreements, collaborations, M&A due diligence, and regulatory submissions.
Dispute Resolution: Support IP litigation, opposition proceedings, and enforcement strategies when necessary.
External Counsel Management: Coordinate with outside counsel on complex patent prosecution, opinions, and legal proceedings.

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