Patent Counsel- OMNI IP group (small molecule focused)

Genentech’s Intellectual Property team is seeking an intellectual property attorney whose passion lies in creating & leveraging game-changing intellectual property 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 Director and Assistant General Counsel, Neuroscience & Ophthalmology IP Lead in the Genentech Legal Department and will be located in our South San Francisco campus.

Key Responsibilities include:

• Driving strategic intellectual property procurement and management of global intellectual property rights for individual small molecule candidates and products including drafting and 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 the individual’s program responsibilities.

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

• Embracing agility and welcoming 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 and communicating and collaborating enthusiastically across time zones and cultures.  

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

• Embracing and cultivating a culture that reflects a strong commitment to diversity, equity, inclusion, and community.

• Embracing a growth-mindset and enjoying work in a fast-paced and diverse global organization.

• Excelling 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 and delivering impactful global intellectual property portfolios from invention capture to patent issuance for individual small molecule 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 and scientific expertise to provide education, guidance, and advice on patent law issues to scientists conducting research and other business stakeholders.

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

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

• Maintaining and sharing expertise and knowledge on legal case law, rules, or regulations before the U.S. Patent and Trademark Office as well as other relevant jurisdictional intellectual property offices.

• Participating in group, department, and cross-functional projects and initiatives where strategies, processes, operating standards and/or practices are developed and deployed to ensure highest quality practices and execution for all aspects of intellectual property 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 and global teams, on-campus presence with IP/Legal and business stakeholders, tackling new challenges with curiosity, effectively utilizing available resources, and an enthusiastic willingness to listen and learn from others.

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

Requirements:

• Demonstrated experience and track record of success in:

  • Building and leveraging global intellectual property 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 and developing and communicating actionable risk mitigation strategies;

  • Experience in intellectual property transactions and due diligence is a plus;

  • Experience in adverse intellectual property proceedings, including but not limited to U.S. litigation, is a plus;  

  • Experience with large molecule global intellectual property portfolios at all stages of prosecution and enforcement is a plus;

  • Experience in gene therapy, cell therapy, and RNA therapeutics is a plus.

• 5+ years of experience in pharmaceutical or biotechnology intellectual property portfolio creation, strategy, and counseling.

• An advanced degree in chemistry or another area relevant to pharmaceutical or biotechnology intellectual property practice.  A Ph.D. is highly desired.

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

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

The expected salary range for this position based on the primary location of South San Francisco is $192,290 to $288,435.  Actual pay will be determined based on experience, qualifications, geographic location, and other job-related factors permitted by law.  A discretionary annual bonus may be available based on individual and Company performance.  This position also qualifies for the benefits detailed at the link provided below.

Benefits

Genentech is an equal opportunity employer, and we embrace the increasingly diverse world around us. Genentech prohibits unlawful discrimination based on race, color, religion, gender, sexual orientation, gender identity or expression, national origin or ancestry, age, disability, marital status and veteran status.

Genentech requires all new hires to be fully vaccinated against COVID-19 as of their start date. This requirement is a condition of employment at Genentech, and it applies regardless of whether the position is located at a Genentech campus or is fully remote.  If you are unable to receive the vaccine due to a disability or serious medical condition, or because it is prohibited as a result of your sincerely held religious beliefs, you will have an opportunity to request a reasonable accommodation.

• Job ID

  202304-110522