Head of Intellectual Property and Licensing

2 weeks ago

Palo Alto, California, United States Arcinstitute Full time

About the Position

We are seeking a highly skilled and experienced intellectual property attorney to lead our legal strategy for protecting and deploying our intellectual property.

The successful candidate will have a strong understanding of molecular biology and biotechnology, as well as extensive experience in patent law, particularly in the pharmaceutical and biotechnology field.

They will be responsible for developing and maintaining a broad understanding of our research activities, collaborating with scientists to identify patentable inventions, and owning the strategic decision on which inventions to patent.

The ideal candidate will have a JD degree, admission to a state bar, and a strong educational background in biology or chemistry, including a bachelor's degree and preferably an advanced degree.

They will also have significant experience applying an intellectual property strategy within an organization, preferably from an in-house position, and excellent analytical, written, and verbal communication skills.

As the Head of Intellectual Property and Licensing, they will play a critical role in driving our research forward and ensuring that our intellectual property is protected and deployed effectively.

About You

You are a seasoned intellectual property attorney with a passion for science and a strong understanding of the pharmaceutical and biotechnology field.

You have a JD degree, admission to a state bar, and a strong educational background in biology or chemistry, including a bachelor's degree and preferably an advanced degree.

You have significant experience applying an intellectual property strategy within an organization, preferably from an in-house position, and excellent analytical, written, and verbal communication skills.

You are comfortable working as part of cross-functional teams to drive results and have a service-oriented focus.

You are highly proactive and collaborative, with a positive approach and a passion for changing the way science is done.

In this position, you will

  1. Develop and maintain a broad understanding of our research activities.
  2. Collaborate closely with scientists to identify patentable inventions and proactively guide the invention disclosure process.
  3. Own the strategic decision on which inventions to patent, taking into account the existing patent landscape as well as potential impact of the IP.
  4. Determine the optimal claim strategy for each patent family.
  5. Select and manage external IP counsel who will draft and prosecute patent applications.
  6. Design and maintain a global patent filing strategy reflecting legal options and market conditions in the relevant jurisdictions.
  7. Negotiate intellectual property agreements with third parties, including out-licensing.
  8. Collaborate with IP counsel at our partner universities to successfully navigate joint IP filing and licensing.
  9. Educate our scientists on intellectual property law and our policies and procedures relating to intellectual property.
  10. Present on intellectual property matters to our leadership and other audiences.
  11. Manage our global intellectual property budget.
  12. Handle occasional trademark, copyright, and trade secrets matters.

Requirements

  • JD degree and admission to at least one state bar.
  • Strong educational background in biology or chemistry, including a bachelor's degree, preferably completion of an advanced degree.
  • Strong understanding of molecular biology and biotechnology.
  • 15+ years of relevant experience, including 7+ years of patent law experience in the pharmaceutical/biotechnology field, or an equivalent combination of patent and pharmaceutical/biotechnology industry experience.
  • Significant experience applying an intellectual property strategy (relating to both patent prosecution and IP transactions) within an organization, preferably from an in-house position.
  • Excellent analytical, written, and verbal communication skills.
  • Service-oriented focus and comfort working as part of cross-functional teams to drive results.

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