Vice President, Intellectual Property Counsel, Microbiome

San Francisco, CA, United States
Dec 05, 2018
Biotech Bay
Required Education
Bachelors Degree
Position Type
Full time
Position: Senior Director/Vice President, Intellectual Property Counsel, Microbiome

Reports to: Senior Vice President, Chief Scientific Officer, Microbiome

Status: Regular, Full-Time, Exempt

Location: South San Francisco

Assembly Biosciences (NASDAQ symbol ASMB) is a clinical-stage biotechnology company advancing two innovative platform programs: a Hepatitis B-Cure program consisting of a new class of oral therapeutic candidates for the treatment of hepatitis B virus (HBV) infection and a novel class of oral synthetic live biotherapeutic candidates, which are designed to treat disorders associated with the Microbiome. We pride ourselves on creating a culture and work environment that is scientifically driven, ambitious, and collaborative. We encourage diversity of thought that leads to great innovation and are looking to add to our dynamic team great people who are driven to transform the lives of patients.

We believe our Microbiome platform represents the best in class approach to developing biopharmaceutical agents from live biotherapeutic products. ABI-M201, our lead program in ulcerative colitis, is currently in IND enabling studies and is expected to enter the clinic in 2019. This program is part of a broader partnership we established with Allergan in 2017 for GI programs with a potential total development and commercial milestones of up to $2.8 billion. Our internal pipeline will represent first in class or best in class microbiome approaches in areas such as immuno-oncology, liver diseases, and other areas of high medical need.

Assembly is headquartered in Carmel, Indiana while the R&D headquarters is located in South San Francisco. The Company also has a microbiome manufacturing facility in Groton, CT. The Company has a strong balance sheet having raised approximately $166 million in July 2018, and thus positioned well to build the next phase of Assembly toward global development and commercialization of our innovative medicines in HBV-cure and the Microbiome.

Position Summary:

This position will report directly to the Senior Vice President, Chief Scientific Officer, Microbiome. The position will have significant interaction with the Microbiome team and be of major importance to the program and the Company. This strategic, yet hands on, role will provide intellectual property leadership and direction for the company's pipeline of programs for diseases in the microbiome space. This is a unique opportunity to have an impact on the success of a well-positioned, well-financed biotechnology company.

Specific responsibilities include, but are not limited to:
  • Participate as an active member of the Microbiome senior team to develop and implement strategy, processes, policies and procedures with respect to intellectual property, working closely with scientists and scientific leadership to identify new IP and/or technical/scientific issues potentially affecting IP
  • Prepare and prosecute patent applications, providing US and international coverage of company innovations
  • Work with and manage outside counsel for IP prosecution and counseling
  • Counsel the Company on patentability, freedom to operate, non-infringement and invalidity matters consistent with Company's IP strategy
  • Prepare for and/or conduct diligence on company and third party IP assets, including competitive intelligence assessments
  • Creating and supporting a culture of innovation, including by educating employees on the inventive process, documenting inventions, and trade secrets
  • Perform diligence on potential in-licensed IP and support out-licensing diligence
  • Participate in IP transactional work, including setting and complying with agreement obligations related to IP
  • Analyze patent related agreements and support contract drafting
  • Individual projects and duties as required
  • Some travel required

Qualifications include:
  • At least 10 years of experience drafting and prosecuting patent applications in the US and internationally in a role at a law firm or a company, including patent portfolio management
  • Registered to practice at the USPTO
  • Admitted to practice in at least one state and eligible to practice law in California as in-house counsel
  • Deep knowledge of and experience with patent and trade secret laws, particularly in the field of biotechnology
  • B.S., M.S., or Ph.D., in biological sciences and a J.D. from accredited US law school

Desired Knowledge, Skills and Abilities:
  • Operates independently or as a team, depending on the situation, with scientists and business leaders to create an intellectual property portfolio aligned with the strategy of the company
  • Extremely good judgment, emotionally intelligent, confident and persuasive, with project or other leadership experience
  • Excellent people, analytical, and written/verbal communication skills
  • Strong motivation and ability to work in a high-paced multidisciplinary environment with minimal supervision
  • Exhibits creativity during the patenting process with strong problem-solving capabilities
  • Active learner and intellectually curious, adapts and grows professional skills to serve the needs of the business
  • Demonstrates flexibility, strong organization skills, attention to detail and ability to prioritize
  • Experience with patent licensing, litigation, opinion work and diligence
  • Collaborates well with outside counsel, business partners and co-workers
  • Strong track record of delivering strong business results according to the business and IP strategy
  • Research skills, including experience with STN®/SciFinder®, AnaVist, Aureka and more general full-text databases, e.g., LexisNexis® TotalPatentTM etc., is a plus.

AAP/EEO Statement
Assembly Biosciences is an Equal Opportunity Employer and prohibits discrimination and harassment of any kind. We are committed to the principle of equal employment opportunity for all employees and to providing employees with a work environment free of discrimination and harassment. All employment decisions are based on business needs, job requirements and individual qualifications, without regard to race, color, religion or belief, national, social or ethnic origin, sex (including pregnancy), age, physical, mental or sensory disability, HIV status, sexual orientation, gender identity and/or expression, marital, civil union or domestic partnership status, past or present military service, family medical history or genetic information, family or parental status, or any other status protected by the laws or regulations in the locations where we operate. We will not tolerate discrimination or harassment based on any of these characteristics.