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Assigned Counsel, Inc. logo
Company Name:
Approximate Salary:
Not Specified
Location:
Wilmington, Delaware
Job Type:
Attorney
Position type:
Full Time
Industry
Pharmaceuticals
Practices
Intellectual Property
Experience level:
5 - 7 Years
Education level:
Juris Doctor

Sr Patent Counsel (5-8 years patent experience) UP-DATED 1/3/17

PERMANENT/FULL-TIME: Our client, a very busy company near Wilmington, DE, seeks a Sr. Patent Counsel with 5-8 years experience in the pharmaceutical industry, specifically with active pharmaceutical ingredients (API).

Additionally, experience with Opioids would be a decided PLUS.

IMMEDIATE NEED.

Candidates will be considered who have patent experience (5-8 years is focus) within either a branded or generic API manufacturer, or, from a law firm where the candidate counseled such manufacturers in API patent matters.

Seeking candidates who are approachable, patient, are true team players, and, who are personable. Must be able to work independently.  Need to bring with you the ability to be in strategic meetings with upper management and be able to explain difficult concepts in layman's terms. This person will be relied upon heavily so the ideal candidate must be very competent.

JOB DESCRIPTION:
The In-House Senior Patent Counsel will lead the IP Steering Committee and provide legal advice and consultation on matters related to: Patent drafting; clearance and review; general IP counseling; foreign filing issues; USPTO Patent Examiner questions; regulatory issues at the state and federal level relating to the manufacturer of active pharmaceutical ingredients; and R&D of product initiatives.

KEY RESPONSIBILITIES:
- Conducting patent and patent application landscape searches and reviews relevant to products under development, including analyzing and reporting the results;
- Maintaining an overview of competitor patent activity relevant to our client's products including reviewing, analyzing and providing freedom to operate, non-infringement and invalidity opinions on competitor patents and patent applications as necessary;
- Leads committees within the Scientific Affairs group to identify intellectual property developed within the Scientific Affairs group or with external partners and determine the appropriate level of protection (trade secret, patent application etc).
- Drafting patent applications and prosecuting those applications at the USPTO and other patent offices worldwide;
- Leads, and reports minutes of the IP Steering Committee comprising appropriate members of the Management Team and Scientific Affairs group.
- Instructing foreign and domestic external counsel assisting in the filing and prosecution of our client's patent applications;
- Assisting in the management of external counsel appointed to represent our client, including representation of post-issuance proceedings at the USPTO and IP litigation;
- Assisting with patent litigation and litigation management as necessary, and; Participates in and influences the decision-making process with appropriate internal client and stakeholders;
- Independently handles legal matters and projects from basic to complex;
- Integrates closely with the R&D and marketing teams to gain a deep understanding of the company’s technologies and business strategy.
- Uses his/her deep knowledge to develop and implement an IP strategy and plan for achieving the strategy that complements our client's business and furthers the company’s goals.  
- Carrying out any other duties that are within the employee’s skills and abilities whenever reasonably instructed.

 

REQUIREMENTS:

Law degree from an accredited law school. Must be licensed and active in at least one state. DE license is NOT required. Membership in USPTO. Must have NO disciplinary history in any jurisdiction.

Truly qualified candidates MUST provide availability to interview and start and also MUST state annual compensation target in the application for this opening.

 

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