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Senior Director, Intellectual Property
2 months ago
Reporting to the Executive Vice President and Chief Legal Officer, the Senior Director, Intellectual Property manages and leads a global patent and trademark portfolio. The position is responsible for the design, implementation, and oversight of the global patent and trademark portfolio, management of the Intellectual Property (IP) team within the Legal department, and provision of services that align with Company strategy, growth, and stage of development. The ideal candidate will have substantial experience with late-stage clinical and commercial-stage biotechnology companies that have a mature patent portfolio, with a focus on post-commercial IP exclusivity, defense and strategy.
This position is remote with a corporate headquarters in Foster City, CA and Parsippany, NJ.
Primary Responsibilities
Directs the global patent and trademark portfolio, including directing outside counsel in the preparation and prosecution of applications and responding to office actions, implementing a strategy for IP lifecycle management; identifying strategic areas for patenting or trademarking, and directing outside counsel in evaluating the patentability of invention submissions and registrability of trademarks globally
- Collaborates with members of the Executive Management Committee (EMC) to develop and advise on global patent and trademark strategy, including life cycle management
- Collaborates with Commercial, Regulatory and outside counsel on post-commercial IP exclusivity mechanisms, including Orange Book, patent term extension and regulatory exclusivity in the U.S. and related programs in foreign jurisdictions
- Reviews scientific publications, abstracts, papers, etc. for relevant IP issues
- Collaborates with Business Development and other functions on the evaluation of in-licensing and strategic partnering opportunities, including participating in and managing IP due diligence
- Prepares for and manages any IP disputes and litigation, including oppositions, Post-Grant Reviews (PGR), and Inter Partes Reviews (IPR)
- Partners with relevant stakeholders across the Company to provide strategic IP counselling with respect to product development that aligns with the Company strategy, growth, and stage of development
- Develops relationships with, and educates employees on, patent and trademark related matters
- Oversees infringement and validity analyses by outside counsel and evaluates risk management strategies
- Reviews and assists with IP portions of SEC filings, stock and debt financings, contracts, in-licensing, out-licensing, mergers and acquisitions, and other commercial transactions as needed
- Identifies and ensures compliance with federal and foreign legal requirements affecting the IP function
- Designs and implements processes to streamline IP procedures; evaluates, selects, implements, configures, integrates, and maintains systems that support IP activities
- Master's degree or higher in Biology, Molecular Biology, Medical Biophysics, Organic Chemistry, Biochemistry, or similar field
- Juris Doctorate from an accredited law school
- Registration with the United States Patent and Trademark Office (USPTO)
- Member of a state bar
- Minimum of 12 years of global patent and trademark experience in a law firm or in-house law department at a public, commercial-stage biotechnology or pharmaceutical company
- Prior experience as in-house counsel highly preferred
- Experience with annuity and docketing systems such as Clarivate CPA and FoundationIP (FIP)
- Strong aptitude in the areas of problem solving, operational management, and strategic planning
- Solid interpersonal skills and the demonstrated ability to influence and partner across all levels of the Company
- Excellent communication (verbal and written), listening and negotiation skills
- Excellent legal and business judgment
- The highest degree of integrity and ethical conduct
- Highly organized with a keen attention to detail
- Adaptable, flexible, and creative in a rapidly changing environment
- Ability to maintain confidentiality as required
- Capable of managing several complex projects simultaneously while working under pressure to meet deadlines; this includes planning and prioritizing work without direct supervision
- Strong knowledge of patent and trademark practices, as well as current US and foreign patent and trademark laws
Benefit Statement:
All regular-status, full-time employees of Geron are eligible to participate in the Company's comprehensive benefit program, pursuant to plan terms and conditions. Plan choices include medical, dental, vision, life insurance, flexible spending accounts, disability insurance, a 401(k)-retirement savings plan, and an employee stock purchase plan. Geron also provides regular-status, full-time employees with a generous time off program that includes vacation, sick, holiday, and paid leave for certain life events.
Salary Statement:
Offered compensation is determined based on market data, internal equity, and an applicant's relevant skills, experience, and educational background. The salary ranges displayed below are only for those who, if selected for the role, will perform work in the specific locations listed. Please note the employment opportunity is not limited to these locations.
California Salary Range: $290,000 to $310,000
New York City Salary Range: $260,000 to $290,000
Washington Salary Range: $255,000 to $295,000
