Patent Agent/Counsel, Therapeutics IP Team (Small Molecule)

Roche • South San Francisco, CA

3d • $165,970 - $361,920 • Onsite

About The Position

Genentech’s Intellectual Property team is seeking a Patent Counsel/Agent with small molecule expertise. As a partner and business strategist, this individual will push the boundaries of what is possible in a highly competitive industry. This position reports into the Therapeutics IP group in Genentech’s Legal IP team. Come join our passion for creating and leveraging game-changing IP strategies that enable Genentech to “do now what patients need next!”

Requirements

• 5+ years of patent attorney/agent experience in life sciences patent prosecution, with majority of experience in patent application drafting and prosecution in a pharma/biotech corporate setting and/or representing such clients/matters in a law firm.
• Admission to practice before the U.S. Patent and Trademark Office (USPTO) required.
• A U.S. law degree (J.D.) and a current “good standing” admission to at least one U.S. state bar is required for attorney applicants.
• An advanced degree in chemical sciences such as chemistry, organic chemistry, or other areas relevant to biopharmaceutical IP practice.
• Demonstrated experience and track record of success in: Building and leveraging global IP portfolios for small molecule biopharmaceuticals at all stages of prosecution and enforcement; Designing and executing complex freedom-to-operate analyses across different technologies and different jurisdictions; Developing and communicating actionable risk mitigation strategies.

Nice To Haves

• A Ph.D. is highly desired.
• Experience in IP transactions and due diligence is a plus.
• Experience in adverse IP proceedings, including but not limited to US litigation, is a plus.
• Besides small molecule experience, additional experience with large molecule global IP portfolios at all stages of prosecution and enforcement is a plus.
• Experience in gene therapy, cell therapy, peptides, and RNA therapeutics is a plus.

Responsibilities

• Driving strategic IP procurement and management of global intellectual property rights for individual small molecule (biopharmaceutical) candidates and products, including drafting and prosecuting patent portfolios, licensing transactions, due diligence assessments, freedom-to-operate, infringement, and validity analyses, and risk evaluation and mitigation strategies.
• Managing and prosecuting active global dockets, including handling U.S. and foreign patent applications as well as post-grant proceedings (e.g., reexamination, reissue, post-grant review), including foreign oppositions and appeals, as they may arise.
• Rendering due diligence assessments, freedom-to-operate, infringement, and validity analyses, and risk evaluation and mitigation strategies for individual program molecules, technologies, tools, and the like.
• Identifying and exploiting new strategic opportunities and approaches by leveraging a deep understanding of patent law and a knowledge of the competitive landscape across the Genentech franchises and portfolio.
• Partnering effectively with relevant stakeholders at all levels of the global organization and across all phases of research, drug development, and commercialization to provide clear, strategic business enabling strategies.
• Influencing business leaders as a trusted advisor and thought partner.
• Deploying in-depth patent and scientific expertise to provide education, guidance, and advice on patent law issues to scientists conducting research and other business stakeholders.
• Maintaining and sharing expertise and knowledge on legal case law, rules, or regulations before the U.S. Patent and Trademark Office as well as other relevant jurisdictional IP offices.
• Partnering in all intellectual property-related transactions, adverse proceedings, and litigation activities related to individual’s program responsibilities.
• Participating in group, department, and cross-functional projects and initiatives where strategies, processes, operating standards, and/or practices are developed and deployed to ensure highest quality practices and execution for all aspects of IP portfolios in a high performing, agile team setting.
• Sustainably building enduring, productive external relationships with outside counsel, third-party collaborators, and partners.
• Ensuring that Genentech remains a great place to practice game-changing IP law, have fun, and make a difference for patients!

Benefits

• Relocation benefits are not available for this job posting.
• A discretionary annual bonus may be available based on individual and Company performance.
• This position also qualifies for the benefits detailed at the link provided below.

What This Job Offers

• Job Type: Full-time
• Career Level: Senior
• Education Level: Ph.D. or professional degree