Patent Counsel

MerckRahway, NJ
Hybrid

About The Position

The Patent Counsel role at our Company is an ideal opportunity for individuals interested in the intersection of scientific innovation and property law, focusing on efficiently capturing innovation with intellectual property, incentivizing continued R&D, and driving access to life-saving medicines for patients. The position is located in Rahway, New Jersey. In this role, the Patent Counsel will work directly with the internal R&D team to identify inventions, conduct patentability assessments, and draft and prosecute patent applications for novel chemical sciences inventions. The role supports programs across all phases of development, from discovery through development and commercialization, and covers diverse areas including different therapeutic areas and modalities. It also offers exposure to and interaction with major business areas such as discovery, development, manufacturing and supply, regulatory, business development, commercial groups, and other legal functions.

Requirements

  • A minimum of a bachelor's degree in the biological, pharmaceutical or chemical sciences from an accredited institution
  • Graduate of an accredited US law school
  • Registered to practice before the USPTO
  • Member in good standing of a Bar of at least one state or the District of Columbia
  • Five (5) or more years of experience as an attorney in a law firm or corporate setting, drafting and prosecuting pharmaceutical patent applications (Note: time accrued as a practicing patent agent may be considered)
  • Strong technical background in chemical sciences
  • Excellent communication and analytical skills

Nice To Haves

  • Advanced degree in the biological or chemical sciences
  • Experience in counseling clients on intellectual property issues
  • Experience prioritizing work and leveraging resources to manage a significant workload
  • Ability to build partnerships and work in cross-functional teams
  • Ability to communicate competently and confidently with R&D clients, business partners, and senior leaders
  • Ability to exercise judgment to drive decisions on routine and non-routine matters within areas of practice
  • Ability to be proactive and take initiative

Responsibilities

  • Working independently through product development teams to devise a patenting strategy with the goal of building robust portfolios of intellectual property for cutting-edge biopharmaceutical products
  • Drafting and prosecuting patent applications related to our Company’s products, product candidates and platform technologies on a global basis
  • Working with internal litigation colleagues to support oppositions, or other proceedings related to your supported programs
  • Working with a large team of in-house U.S. and European patent attorneys, paralegals, legal operations and support staff, and local agents
  • Conducting freedom to operate analyses for our Company’s R&D activities
  • Actively supporting various business development activities (e.g., research collaborations and acquisitions) by conducting IP due diligence on assets or technology of interest, counseling the business as to IP expectations, and supporting the drafting and negotiation of related agreements, all while working with a team of scientific, legal and commercial functions

Benefits

  • medical healthcare benefits (for employee and family)
  • dental healthcare benefits (for employee and family)
  • vision healthcare benefits (for employee and family)
  • other insurance benefits (for employee and family)
  • retirement benefits, including 401(k)
  • paid holidays
  • vacation
  • compassionate days
  • sick days
  • annual bonus
  • long-term incentive, if applicable
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