
Senior Director, Intellectual Property Counsel
Posted 5 days ago

Posted 5 days ago
This is a fully remote position, open to applicants in United States.
• Formulate and implement comprehensive global intellectual property strategies that align with the company’s research priorities, pipeline, and corporate goals
• Develop and oversee patent portfolios that encompass drug candidates, formulations, manufacturing processes, methods of use, and other innovations
• Draft, review, and supervise the preparation and prosecution of U.S. and international patent applications
• Assess invention disclosures and collaborate with scientists to identify patentable innovations
• Recognize and safeguard trade secrets
• Conduct and manage freedom-to-operate, patentability, validity, and infringement assessments
• Assist in life cycle and exclusivity planning, including exploring patent term extension opportunities
• Keep track of competitor patent activities and relevant developments in intellectual property
• Aid in trademark clearance and protection for product branding
• Provide counsel to internal teams including discovery, translational science, CMC, clinical development, and others
• Review publications, presentations, and external disclosures to ensure intellectual property protection
• Offer advice on inventorship, ownership, confidentiality, trade secrets, and intellectual property risks
• Educate internal stakeholders on intellectual property practices
• Support the intellectual property aspects of licensing, research collaborations, co-development agreements, material transfer agreements, and other strategic transactions
• Conduct and assist with intellectual property due diligence
• Draft, review, and negotiate intellectual property clauses in agreements
• Select, direct, and manage outside patent counsel and intellectual property service providers on a global scale
• Oversee patent dockets, filing deadlines, annuities, and portfolio records
• Manage intellectual property budgets, forecasts, and expenses related to outside counsel
• Recommend prioritization of portfolios and allocation of resources
• Advise executive leadership and potentially take on Chief Intellectual Property Counsel responsibilities
• Juris Doctor (J.D.) degree from an accredited law school
• Active membership in at least one U.S. state bar
• Registration to practice before the U.S. Patent and Trademark Office
• Minimum of 12 years of relevant experience in biotechnology or pharmaceutical patent law
• Background in a leading intellectual property law firm as well as an in-house legal department within the biotechnology or pharmaceutical sector
• Strong technical knowledge of biological and pharmaceutical drug discovery and development, with a focus on biologics, antibodies, immunology, and inflammation
• Extensive practical experience in drafting and prosecuting U.S. and international patent applications and managing intricate global patent portfolios
• Experience dealing with patent disputes, oppositions, or other post-grant proceedings
• Proficient in conducting freedom-to-operate, patentability, validity, and infringement assessments
• Familiarity with supporting intellectual property due diligence and negotiating provisions in licensing and collaboration agreements
• Capability to oversee outside counsel, manage budgets, and effectively prioritize competing demands
• Excellent communication skills with the ability to clarify complex legal and scientific concepts
• Capacity to work independently, apply sound judgment, and foster effective relationships across scientific and business teams
• Competitive market compensation and benefits package
• Performance-based bonus
• Opportunities for equity grants
• Comprehensive health benefits
• Welfare benefits
• Retirement benefits
• Unlimited paid time off (PTO)
• Two company-wide shutdowns of one week each annually
• Opportunities for professional development
• Remote working environment with regular in-person meetings
• Chance to work in a fast-paced, dynamic setting and contribute to impactful medicines
Upstart
Harbor
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