Senior Patent Counsel

1 week ago

South San Francisco, California, United States Genentech, Inc Full time
Job Summary

Genentech, Inc. is seeking a highly skilled Senior Patent Counsel to join our Intellectual Property team. As a key member of our team, you will play a critical role in creating and leveraging groundbreaking IP strategies that enable Genentech to drive innovation and growth in the life sciences industry.

Key Responsibilities
  • Providing Advice & Counsel: Provide clear, informed, and sophisticated counseling to stakeholders, including leaders, within the Pharma Technical (PT) organization and Research & Early Development (gRED) focused on our expanding cell therapy and device/drug delivery portfolios and related technologies.
  • Develop in-depth expertise in particular areas of cell therapy and other new modalities, including related manufacturing technologies, large molecule drug discovery and development, while providing guidance on patent law issues to scientists conducting research and other business stakeholders.
  • Render legal opinions and provide guidance concerning issues of patentability, validity, and freedom-to-operate.
  • Conduct due diligence investigations and analyses of in-house and partnered programs, including freedom-to-operate, infringement, and validity analyses.
  • Maintain strong knowledge of legal case law, rules, and regulations before the U.S. Patent & Trademark Office as well as other jurisdictional IP offices.
Managing Docket (Patent Preparation and Prosecution):
  • Prepare, file, and prosecute patent applications with a primary focus on the protection of inventions and patent prosecution relating to cell therapies, large molecule therapeutics, and related manufacturing technologies, from 'cradle to grave' and at diverse development stages, as well as matrixed support to other IP practice areas.
  • Manage and prosecute a substantial and active global docket, including handling U.S. and foreign patent applications as well as post-grant proceedings, including foreign oppositions and appeals, as they may arise.
  • Balance competing priorities.
Collaborating, Managing, & Supporting Teams:
  • Provide IP support for partnering and other agreements, including major licensing agreements, research collaborations, MTAs, CDAs.
  • Support intellectual property-related transactional and litigation work.
  • At times, direct and manage outside counsel, including overseeing budget as appropriate.
  • Collaborate with colleagues around the globe on IP matters and as part of cross-functional teams.
  • Engage in clear communication, both oral and written, to all levels of the organization with a willingness to listen and learn from others.
  • Influence business leaders as a trusted advisor and thought partner.
Qualifications:
  • 7+ years of patent attorney/agent experience in life sciences patent prosecution, with a majority of experience in patent application drafting and prosecution in a pharma/biotech corporate setting and/or representing such clients/matters in a law firm.
  • Admission to practice before the U.S. Patent and Trademark Office (USPTO) required.
  • A United States law degree (J.D.) and a current 'good standing' admission to at least one US state bar is required for attorney applicants.
  • A degree in a biological science is required, with ideally an advanced or dual degree in engineering (mechanical or electrical) or physics.
  • Medical device experience a plus.
  • Agreement and transactional experience is a plus.
  • Experience with adverse proceedings (e.g., USPTO adverse proceedings, EPO adverse proceedings, U.S. litigation) is a plus.
Compensation:

The expected salary range for this position based on the primary location of California is $207,600 - $385,600 (patent counsel) or $180,300 - $334,900 (patent agent). 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.

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