Director and Assistant General Counsel, Neuroscience & Ophthalmology IP Lead, Intellectual Property

  • Genentech
  • Jul 30, 2021
Full time Intellectual Property Legal

Job Description

This position is based in: South San Francisco, California

Job ID: 202107-121356

Position Scope and Key Responsibilities:

Genentech’s Intellectual Property team is seeking a leader whose passion lies in creating and leveraging game-changing IP strategies that enable Roche & Genentech to do now what patients  need next. As a senior business strategist, this individual will be pushing the boundaries of what is  possible in a highly competitive industry while leading, empowering and developing great attorneys and staff across a dynamic and diverse global organization. This position reports directly to the Senior Director and Associate General Counsel, Ophthalmology, Neuroscience, Immunology & Infectious Disease 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 including drafting & prosecuting patent portfolios, licensing transactions, due diligence assessments, freedom-to-operate, infringement and validity analyses, and risk evaluation & mitigation strategies.  
  • Leading on behalf of the Genentech IP Legal team in intellectual property-related transactions, adverse proceedings, and litigation activities.
  • Partnering effectively with stakeholders at all levels of the global organization and across all phases of research, drug development & commercialization to provide business enabling strategy and counseling.
  • Managing and growing a small team of attorneys/agents directly and in a matrixed environment, including performance and talent management, coaching and mentoring.
  • Successfully leading and modeling change in substantive practice & operational model to create value & effectively manage risk.
  • Sustainably building enduring, productive external relationships with outside counsel and third party collaborators & partners.
  • Engaged & creative leadership as a member of the OMNI practice area group and of the extended Genentech IP Leadership 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 growing people, fostering teamwork, and thinking outside the box.  

Specific responsibilities include:

  • Leading and directly managing a small team of patent attorneys & agents in the design & delivery of global IP portfolios, assessing, communicating & mitigating risk, identifying new IP opportunities & strategic approaches by leveraging knowledge of industry & legal trends, the competitive landscape, and the Genentech product, R&D portfolio, and disease area strategies.
  • Providing input, guidance, and hands-on work on complex legal issues, prosecution strategies, complicated transactions, and some direct management of patent portfolio and counseling for R&D candidates and products.
  • Assuring appropriate attorney/agent staffing, effort and cross-team/function communication at all times and on all matters within the OMNI remit.
  • Building effective relationships by communicating and collaborating enthusiastically across time zones and cultures.
  • Maintaining and sharing deep expertise and knowledge on legal case law, rules or regulations before the US Patent & Trademark Office as well as other relevant jurisdictional IP offices.
  • Developing & deploying strategies, processes, operating standards and/or practices to ensure highest quality practices & execution for all aspects of IP portfolios in a high performing, agile team setting.
  • Leading and/or participating in Group, Department, and cross-functional projects and initiatives that impact the people and/or practices of the IP team.
  • Exhibiting a “can do” attitude in anticipating and proactively resolving issues & conflicts, streamlining processes, and reducing redundancies and/or inefficiencies in operating models & systems.  
  • Acting as a role model across the team and Genentech/Roche organization in effective communication, poise under pressure, a solution oriented mindset, collaboration across local & global teams, tackling new challenges with curiosity, effectively utilizing available resources, and a 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!

 Job Requirements:

  • Demonstrated experience and track record of success in:
    • Building & leveraging global IP portfolios;
    • Developing & implementing global IP strategies or initiatives, both substantive & operational;
    • Experience in IP transactions and due diligences;
    • Experience in adverse proceedings including but not limited to US litigation, USPTO adverse proceedings, and/or EPO adverse proceedings.
  • 9+ years of experience in pharma intellectual property portfolio creation, strategy, and counseling.
  • At least 4 years of experience in a pharmaceutical corporation.
  • An advanced degree in the biological or chemical sciences, or other area relevant to pharmaceutical IP practice. A Ph.D. is a plus.
  • 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.