Patent Agent / Sr. Patent Agent /Patent Counsel / Sr. Patent Counsel – Informatics

  • Genentech
  • Nov 08, 2022
Full time Intellectual Property

Job Description

Position Scope and Key Responsibilities:

The Position

Genentech’s Intellectual Property team is seeking a collaborative and innovative patent attorney or agent to create game-changing IP strategies that will enable Roche and Genentech to do now what patients need next. As an IP team member, this individual is versatile and passionate in crafting IP protection for groundbreaking innovation supporting our personalized healthcare and computational research and development efforts. You will be working with scientists, attorneys, patent agents, and staff across a dynamic and diverse global organization pushing the  boundaries of what is possible in a highly competitive industry. This position will be located in our South San Francisco campus and will report to the Assistant General Counsel responsible for Informatics & Personalized Health Care Intellectual Property.

 Position Scope and Key Responsibilities: 

●      Guide invention harvesting, global patent preparation and prosecution, and portfolio development, individually and in cross-functional global teams for our personalized healthcare and computational research and development efforts.

●      Carry out IP landscaping searches, due diligence assessments, and freedom-to-operate analyses as needed.

●      Develop an understanding of the science, technology, and business strategy necessary to inform both IP strategy as well as business decision-making.

●      Provide IP diligence, advice, and strategy for IP transactions to business development in support of local and globally-driven collaborations, licenses, and acquisitions.

●      Build strong, collaborative relationships with a diverse set of stakeholders across global sites and at all levels of the organization, and create efficient and effective processes for communicating, advising, and working with those stakeholders. Foster a culture that reflects a strong commitment to diversity, inclusion, and community as part of an organization focused on bringing new insights and novel  therapeutic options to patients worldwide.

●      Direct and manage outside counsel and where applicable negotiate rates, project fees, and timelines.

Critical Competencies:

●      Expertise in global patent portfolio preparation and prosecution for inventions involving bioinformatics analytical pipelines, software, computer systems, database  architectures, mobile applications, data science, statistical analyses, machine learning, deep learning, and digital health innovations.

●      Exceptional communication skills that demonstrate consistent clear communication, both oral and written, to all levels of an organization as well as a willingness to listen and learn from others.

●      Proven record as an adaptive and results-oriented performer. This includes balancing competing priorities while managing IP portfolios, working effectively both independently and in global and cross-functional teams, and managing external relationships with outside counsel and collaborators.

●      Ability to work independently and proactively with minimal direction.

●      Excellent judgment, pragmatism, and negotiation skills.

●      Strong organizational skills, keen attention to detail, and ability to prioritize projects and meet aggressive deadlines.

●      Experience in life sciences, including sequencing or other in-vitro diagnostic  technologies, therapeutic molecules, and related technologies is a plus. Experience in patent litigation and adverse administrative patent proceedings such as  IPRs, reissues, reexamination, post-exam, and EPO opposition practice is a plus. Experience serving as a strategic legal advisor in a corporation is a plus. Experience providing advice on complex licensing and/or other transactional matters is a plus.

Requirements:

●      5+ years of experience in creating, prosecuting, and advising on complex global  patent portfolios and IP strategy.

●      Solid knowledge of global intellectual property laws and practices.

●      Undergraduate or (preferably) advanced degree in mathematics, applied mathematics,  computer science, computer engineering, systems engineering, electrical engineering,  physics, bioinformatics, or computational biology.

●      A strong technological aptitude for learning and working with a range of interdisciplinary technologies. An undergraduate or advanced degree in a life sciences discipline is preferred, but not required.

●      Record of success in innovating and creating business value, fostering teamwork and  collaboration with other teams, and influencing and resolving conflict.

●      If J.D., then admission to a U.S. State bar or the District of Columbia bar. Admission to the United States Patent and Trademark Office Bar.