Patent Counsel/Senior Patent Counsel, Oncology Intellectual Property Practice Group

  • Genentech
  • Aug 08, 2022
Full time Intellectual Property Legal

Job Description

Job ID: 202208-129877

Position Scope and Key Responsibilities:

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 a key partner and business strategist, this individual will push the boundaries of what is possible in a highly competitive industry. This position reports directly to the Director & Assistant General Counsel in the Molecular Oncology IP Practice Group 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 small molecule (pharmaceutical) 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.

               Building effective relationships 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.

               Sustainably building external relationships with outside counsel and third party collaborators & partners.

               Embraces and fosters a culture that reflects a strong commitment to diversity, equity, inclusion, and community.

               Embraces a growth-mindset and enjoys work in a fast-paced and diverse global organization.

               Excels in working independently and proactively with minimal direction, strong organizational skills, and ability to prioritize and balance competing projects and responsibilities.

Specific Daily Responsibilities & Associated Skill Sets may include:

              Designing & delivering impactful global IP portfolios from invention capture to patent issuance and beyond for individual small molecule (pharmaceutical) candidates and products.  Managing and prosecuting active global dockets, including drafting and 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, and tools.

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

               Maintaining and sharing expertise and knowledge on legal case law, rules, and 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 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 levels 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.

               Ensuring that Genentech remains a great place to practice game-changing IP law and meet the challenges of bringing great medicines to patients. 


               Demonstrated experience and track record of success in:

          Building & leveraging global IP portfolios for small molecule pharmaceuticals at all stages of prosecution and enforcement;

          Designing and executing complex freedom to operate analyses across different technologies and different jurisdictions; developing and communication actionable risk mitigation strategies;

          Experience with IP transactions and due diligence is a plus;

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

          Experience with building & leveraging large molecule (biopharma or biotechnology, including antibodies, gene therapy and other modalities) global IP portfolios at all stages of prosecution and enforcement is a plus.

               7+ years of experience in small molecule (pharmaceutical) intellectual property portfolio creation, strategy, and counseling.

               Preferably includes 3+ years of experience in a pharmaceutical corporation.

               An advanced degree in chemical sciences such as chemistry, organic chemistry or other area relevant to pharmaceutical 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.