Remotery

Senior Director, Corporate Counsel, IP

Posted Aug 7

This is a fully remote position, open to applicants in California, +1 more state.

📋 Description

• Formulate and implement global patent and intellectual property strategies for products, product candidates, platform technologies, as well as acquired or licensed assets.

• Oversee intellectual property due diligence for acquisitions, licensing deals, collaborations, partnerships, and other strategic transactions.

• Carry out freedom-to-operate evaluations, portfolio strength assessments, exclusivity evaluations, and analyses of material IP risks and value drivers.

• Present findings and recommendations from due diligence to executive leadership and transaction teams to assist in valuation, negotiations, and structuring of transactions.

• Create and execute post-transaction integration strategies, which include patent portfolio optimization, alignment of ownership, harmonization of prosecution, and enhancement of asset value.

• Develop and manage global patent portfolios from the capture of inventions through issuance and lifecycle management.

• Offer strategic insights into licensing, collaboration, acquisition, due diligence, and integration documentation.

• Collaborate with research, development, commercial, regulatory, business development, and corporate development stakeholders.

• Conduct analyses related to infringement, validity, patentability, competitive landscape, and freedom-to-operate, while also formulating risk mitigation strategies.

• Oversee outside counsel in matters concerning prosecution, due diligence, litigation, opinions, and strategic issues.

• Advise senior management and cross-functional teams on IP risks, opportunities, exclusivity, competitive positioning, and portfolio optimization.

• Review publications, presentations, press releases, and other public disclosures to safeguard patent rights.

• Counsel on or lead patent litigation, IPRs, PGRs, European oppositions, and associated proceedings.

• Direct departmental initiatives aimed at enhancing IP operations, due diligence capabilities, portfolio management, and overall organizational efficiency.


⛳️ Requirements

• Fully qualified U.S. Patent Attorney or Agent.

• More than 10 years of pertinent intellectual property experience in the biopharmaceutical sector.

• Significant in-house experience in supporting corporate development, licensing, collaborations, mergers and acquisitions, or other strategic transactions.

• Bachelor’s degree in biological sciences, biochemistry, chemistry, or another field relevant to pharmaceuticals, biotechnology, or life sciences.

• Extensive experience leading IP due diligence for acquisitions, licensing deals, collaborations, venture investments, and other strategic corporate transactions.

• Proficient in evaluating, integrating, and maximizing the value of acquired or licensed patent portfolios and intellectual property assets.

• In-depth expertise in patent portfolio development, lifecycle management, exclusivity strategies, freedom-to-operate analyses, and competitive intelligence.

• Capability to work both independently and collaboratively in a fast-paced, dynamic team environment.

• Exceptional written, verbal, and presentation skills, with the ability to translate complex legal and scientific concepts into clear business recommendations.

• Strategic mindset with the ability to foresee business challenges, identify opportunities, and devise practical solutions.

• Competence in influencing cross-functional decision-making and building trusted relationships with executives and business stakeholders.

• Strong project management, prioritization, and organizational skills.

• Experience in patent litigation, post-grant proceedings, oppositions, and other adversarial matters is an advantage.


🏝️ Benefits

• Discretionary annual cash bonus or incentive compensation.

• Discretionary equity grants.

• Medical insurance.

• Dental insurance.

• Vision insurance.

• 401k retirement savings plan.

• Flexible paid vacation.

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