Sr. IP Counsel, Chemistry | Small Molecule

Neurocrine Biosciences • San Diego, CA

3d

About The Position

This position will serve as a senior intellectual property expert responsible for developing and advancing global IP strategies across multiple small molecule discovery, clinical development and commercial phase Neurocrine programs, including strategic counsel related to for licensing, collaboration, acquisition, and other strategic transactions. The role provides expert IP counsel to cross-functional and senior stakeholders, identifies and resolves complex IP issues, and influences business and portfolio strategies through deep expertise in small molecule patent and transactional matters.

Requirements

• At least 8 years of in-house and/or law firm patent experience related to small molecule drugs
• Registered to practice before the US Patent and Trademark Office
• A graduate degree in organic chemistry or an allied chemistry discipline required, Ph.D. preferred; and a Juris Doctorate and admission to practice law in a US state or the District of Columbia required
• Deep and broad patent law expertise related to small molecule therapies and pharmaceutical subject matter, including U.S. and foreign patent preparation and prosecution, strategic IP counseling, and management of complex or contentious IP matters
• Significant experience structuring, drafting, reviewing, and negotiating IP provisions in complex life sciences transactions involving U.S. and foreign entities, with deep knowledge of licensing structures, sublicensing, exclusivity, improvements, prosecution and enforcement rights, freedom to operate, and allocation of background, foreground, and newly developed IP.
• Strong understanding of the intersection between patent law and transactional contracting, including licensing structures, sublicensing, exclusivity, improvements, prosecution and enforcement rights, freedom to operate, and allocation of newly developed IP
• Ability to translate complex patent and IP issues into practical, commercially focused advice for business development, research, and legal stakeholders
• Ability to independently oversee legal matters, manage the use of outside legal counsel and work collaboratively with other personnel at Neurocrine
• Ability to independently prioritize and lead multiple complex, high-impact legal matters, exercise sound judgment in ambiguous situations, and drive matters through successful resolution

Nice To Haves

• Industrial or academic scientific experience in small molecule therapeutics discovery, development, and/or manufacturing preferred, but not required
• Experience with managing small molecule pharmaceutical exclusivity related legal matters including brand-on-brand patent litigation strategies and the aspects of regulatory affairs related to market exclusivity is preferred but not required
• Exceptional communication skills, including presentation, interpersonal interactions, written work and conflict resolution with an ability to effectively interact with Neurocrine team members at every level in the organization and across a wide range of scientific knowledge levels
• Experience with Orange Book and Patent Term Extension practice for the US and SPC practice for Europe is preferred but not required

Responsibilities

• Providing strategic IP counsel to business development, research, legal, senior leadership and other cross-functional stakeholders on IP-related deal structure, risk allocation, and contractual protections, including license grants, sublicensing rights, exclusivity, improvements, background and foreground IP, patent prosecution and enforcement, and rights following termination
• Leading strategic IP analysis and due diligence for licensing, collaboration, acquisition, and other strategic transactions, partnering with internal and external counsel to identify, evaluate, and resolve complex IP issues involving patent portfolios, chain of title, ownership and inventorship, third-party license restrictions and encumbrances, freedom-to-operate, patent coverage, and other third-party rights.
• Supporting post-execution IP-related alliance and contract matters, including implementation of IP provisions and evaluation of amendments, new research activities, and additional licensing opportunities
• Developing and directing patent strategies, including invention identification, patent drafting, prosecution, and portfolio development, relating to small molecule pharmaceuticals
• Identifying and driving strategic opportunities to strengthen and expand Neurocrine's IP position in collaboration with members of various discovery, development and business groups within Neurocrine
• Influencing and collaborating with internal stakeholders, collaborators and other external strategic partners to develop and advance global IP strategies aligned with Neurocrine’s business and portfolio objectives
• Leading the IP strategy, review and negotiation of intellectual property provisions in complex life sciences transactions, including license and collaboration agreements, research agreements, option agreements, acquisitions, and other business development transactions
• Providing strategic IP counsel for ANDA litigation and other IP-related contentious matters, in partnership with internal stakeholders
• Strategically directing and managing outside legal counsel globally to ensure alignment with Neurocrine's IP objectives, business priorities, and legal strategy
• Other duties assigned as required

Benefits

• retirement savings plan (with company match)
• paid vacation, holiday and personal days
• paid caregiver/parental and medical leave
• health benefits to include medical, prescription drug, dental and vision coverage

What This Job Offers

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