In-House Counsel - IP Prosecution

Redwood City, CA, US
Sep 24, 2018
Required Education
Bachelors Degree
Position Type
Full time
AbbVie is searching for a Counsel/Senior Counsel to help foster and grow the company's intellectual property group, with a particular focus on large molecule assets and/or small molecule chemistry. The ideal candidate will be a results-oriented, self-starter who can participate in strategic planning and implementation of patent preparation and prosecution strategies as well as due diligence projects. Working both individually and in cross-functional teams, the attorney will develop and implement intellectual property strategies for AbbVie's therapeutic products, clinical candidates, and late-stage development assets.

The attorney will have opportunities to develop in-depth expertise in various aspects of biological and chemical sciences in the medicinal field. Interacting closely with the company's business groups and scientists, the attorney will provide guidance on patent law and strategies to procure, preserve and protect the company`s intellectual property. The ideal candidate will be an integral and invaluable member of the business and provide pivotal guidance to facilitate the discovery and innovative approaches to patient health.

Responsibilities include:

Working with scientific teams to identify patentable subject matter; drafting, filing and prosecuting patent applications worldwide both directly and through management of outside counsel; conducting prior art searches; analyzing third-party patent positions; conducting due diligence in support of licensing activities; providing legal advice and counsel to cross-functional R&D and business teams on a variety of IP related matters; and challenging/defending patents in IPR, opposition, interference and other proceedings.

This position will be based in the Bay Area and the position will support R&D teams at the South San Francisco, Redwood City and Sunnyvale locations and will primarily focus on the discovery and development of biologic and small molecule therapeutics for oncology indications.

  • JD degree from an accredited law school, state bar admission (CA admission not required) and registration to practice before the USPTO
  • Three or more years of experience practicing patent law at a law firm and/or biopharmaceutical company, including substantial U.S. and foreign patent prosecution. Position level (Counsel/Senior Counsel) will be commensurate with experience
  • Technical background should include experience and/or advanced degree in relevant field, such as biotechnology, molecular biology, immunology, biochemistry, genetics, chemical engineering or pharmacology; experience with pharmaceutical development preferable
  • Strong legal, analytical, communication and interpersonal skills
  • The ideal candidate will have experience with preparation and prosecution of patent applications for both biologic and small molecule therapeutic candidates, and experience in defending patents in post-grant proceedings before national patent offices in the U.S. and abroad.
  • Demonstrated ability to manage complex projects to meet deadlines

Equal Opportunity Employer Minorities/Women/Veterans/Disabled