SENIOR PATENT COUNSEL/SENIOR COUNSEL SPECIALIST, ASSISTANT GENERAL COUNSEL, OMNI IP TEAM

  • Genentech
  • South San Francisco, CA, USA
  • Oct 20, 2021
Full time Intellectual Property Legal

Job Description

THE POSITION

Genentech’s Intellectual Property team is seeking an intellectual property attorney whose passion lies in creating & leveraging game-changing IP strategies that enable Roche & Genentech to do now what patients need next.  As an enabling partner and key business strategist, this individual will be pushing the boundaries of what is possible in a highly competitive industry. This position reports directly to the Senior Director and Associate General Counsel, Ophthalmology, Neuroscience, Immunology & Infectious Disease (“OMNI”) IP Practice Group Lead in the Genentech Legal Department and will be located in our South San Francisco campus.

Key Responsibilities include:

  • Driving strategic IP procurement and management of global intellectual property rights for individual large molecule (biopharmaceutical) candidates and products including drafting & prosecuting patent portfolios, licensing transactions, due diligence assessments, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies. 

  • Partnering in all intellectual property-related transactions, adverse proceedings, and litigation activities related to individual’s program responsibilities.

  • Partnering effectively with relevant stakeholders at all levels of the global organization and across all phases of research, drug development & commercialization to provide clear, strategic business enabling strategy. 

  • Embraces agility and welcomes iteration as tools of continuous improvement – both personally and within and across all aspects of high performing teamwork

  • Collaborating and working effectively in a matrixed environment

  • Exemplifying winning as “one team” through building effective relationships, communicating & collaborating enthusiastically across time zones and cultures.  

  • Sustainably building enduring, productive external relationships with outside counsel and third party collaborators & partners.

  • Embraces and cultivates a culture that reflects a strong commitment to diversity, inclusion and community.

  • Engaged & creative member of a practice area group and of the Genentech IP Team.

The successful candidate has a growth mindset, enjoys work in a fast-paced, diverse, & global organization, and is energized by the complexity and challenges of bringing great medicines to patients.  This candidate excels at working independently and proactively with minimal direction, displays strong organizational skills, keen attention to detail, and ability to prioritize and balance competing projects, and effectively meet aggressive deadlines when needed.

Specific Daily Responsibilities & Associated Skill Sets may include:

  • Designing & delivering value add global IP portfolios from invention capture to patent issuance for individual large molecule (biopharmaceutical) candidates and products.  Managing and prosecuting active global dockets, including handling U.S. and foreign patent applications as well as post-grant proceedings (e.g., reexamination, reissue, post-grant review), including foreign oppositions and appeals, as they may arise.

  • Deploying in-depth patent & scientific expertise to provide education, guidance & advice on patent law issues to scientists conducting research and other business stakeholders

  • Rendering due diligence assessments, freedom-to-operate, infringement and validity analyses, risk evaluation, and mitigation strategies for individual program molecules, technologies, tools and the like.

  • Identifying and exploiting new strategic opportunities & approaches leveraging a deep understanding of patent law and a knowledge of the competitive landscape across the GNE franchises & portfolio.

  • Maintaining and sharing expertise and knowledge on legal case law, rules or regulations before the US Patent & Trademark Office as well as other relevant jurisdictional IP offices

  • Participating in Group, Department, and cross-functional projects and initiatives where strategies, processes, operating standards and/or practices are developed & deployed to ensure highest quality practices & execution for all aspects of IP portfolios in a high performing, agile team setting.

  • Acting as a role model in, for example, poise under pressure, solution-oriented mindset, clear communication at all level of the organization, effective collaboration across local & global teams, persevering in the face of obstacles, tackling new challenges with curiosity, effectively utilizing available resources, and an enthusiastic willingness to listen & learn from others.

  • Assuring that Genentech remains a great place to practice game-changing IP law, have fun, and make a difference for patients!

Requirements:

  • Demonstrated experience and track record of success in:

    • Building & leveraging global IP portfolios at all stages of prosecution and enforcement;

    • Designed and executed complex freedom to operate analyses across different technologies and different jurisdictions; developing and communication actionable risk mitigation strategies

    • Experience in IP transactions and due diligence is a plus;

    • Experience in adverse IP  proceedings including but not limited to US litigation, is a plus;  

  • [Senior Patent Counsel] 7+ years of experience in biopharma or biotechnology intellectual property portfolio creation, strategy, and counseling.

  • [Senior Counsel Specialist] 10+ years of experience in biopharma or biotechnology intellectual property portfolio creation, strategy, and counseling.

  • An advanced degree in biological sciences such as biochemistry, molecular biology or other area relevant to biopharmaceutical IP practice.  A Ph.D. is highly desired.

  • A United States law degree (JD) with a current “good standing” admission to at least one US state bar.

  • Admission to practice before the U.S. Patent and Trademark Office.

Job ID

202110-128116