HEAD OF INTELLECTUAL PROPERTY

Employer
PACT Pharma
Location
94545, Hayward
Salary
TBD
Posted
May 15, 2018
Ref
PP-IP
Hotbed
Biotech Bay
Required Education
Other
Position Type
Full time

We’re currently seeking a dynamic individual to join our company as Head of Intellectual Property. Reporting to the Chief Scientific Officer, the Head of Intellectual Property will develop, manage and lead a comprehensive IP strategy for PACT.  In this position, you will have the opportunity to provide leadership for the company in all intellectual property-related matters.

Responsibilities:

  • Develop and implement IP strategy, as well as policies and procedures to ensure the protection of the company’s intellectual property. 
  • Work closely with research and development personnel to identify patentable inventions, participate in invention disclosure assessments and provide guidance regarding the patentability of inventions under review.
  • Monitor and analyze competitive intellectual property and advise senior management and the Board on the implications of such rights. 
  • Conduct assessments regarding patentability, freedom to operate, infringement and validity matters.
  • Manage outside counsels’ patent preparation and prosecution efforts, including reviewing applications and prosecution materials prepared by outside counsel and providing technical and legal commentary to enhance overall application quality.
  • Manage IP budget and set priorities for investment in intellectual property portfolio.
  • Educate internal personnel on relevant IP laws and related business issues.
  • Advise on occasional trademark matters.
  • Review contracts and advise on transactional matters relating to intellectual property, eg. non-disclosure agreements, materials transfer agreements and collaborations.

Qualifications:

  • J.D. degree from an ABA accredited law school
  • Relevant life sciences degree or experience (immunology, cell biology, molecular genetics, etc.)
  • 7+ years of IP experience in the life sciences industry as in-house patent counsel and/or in a nationally recognized law firm
  • Admission in good standing with the USPTO and any state bar (California preferred).
  • Strong patent database searching skills are desirable
  • Ability to prioritize responsibilities, flexible and able to multi-task
  • Ability to work well with all levels of management and staff
  • Strong organizational skills with attention to detail
  • Excellent communication skills, both oral and written