Patent Counsel or Patent Agent

South San Francisco, CA
Feb 08, 2019
Required Education
Bachelors Degree
Position Type
Full time

This position is in the Company’s patent department and reports to the Vice President, Legal & Chief Patent Counsel.  The patent department prepares and prosecutes patent applications worldwide and counsels the Company on all types of intellectual property matters.  The successful candidate will be responsible for a wide range of intellectual property-related activities with an emphasis on patent preparation, prosecution and counseling R&D personnel.  

The successful candidate will be bright, self‐driven and highly motivated, and will work effectively on cross-functional R&D and business teams.  Primary duties and responsibilities will depend on training, education and experience. 

Primary Duties & Responsibilities: 

Prepares, files and prosecutes domestic and foreign patent applications

  • Works closely with research, development and clinical teams to identify new inventions
  • Prepares and files new patent applications
  • Develops worldwide filing and prosecution strategy for patent applications
  • Prosecutes patent applications in the USPTO
  • Instructs foreign agents on patent prosecution outside the U.S.
  • Oversees and directs outside counsel as needed 

Identifies and evaluates IP issues including freedom-to-operate

  • Directs and evaluates freedom-to-operate studies
  • Analyzes third party patents and patent applications
  • Works with outside counsel to obtain infringement and validity opinions as necessary 

Provides counseling and training on IP issues

  • Advises R&D on IP strategy for research programs and product candidates
  • Educates R&D personnel on IP topics
  • Reviews Company publications and presentations for IP content and disclosures       

Supports business development activities relating to IP

  • Participates in IP due diligence for potential licensing & partnership deals
  • Works with existing external partners on IP matters 

Supports in-house corporate attorneys

  • Works with in-house corporate attorneys on IP aspects of agreements 

Qualifications & Skills:

  • Registered to practice before the USPTO
  • J.D. degree optional (if J.D., then admitted to practice law in at least one state)
  • At least three years of patent experience including preparation and prosecution
  • Working knowledge of organic or medicinal chemistry
  • An advanced degree in chemistry is preferred 

Desired Traits:

  • Self‐starter with a strong work ethic
  • Comfortable in a growing and changing company
  • Resourceful in developing new strategies to effectively support clients
  • Strong multitasker and time manager
  • Excellent written and verbal communication and interpersonal skills
  • Attentive to detail
  • Excellent judgment and problem-solving abilities
  • High degree of professionalism
  • Strong ethical standards
  • Strong teamwork ethic
  • Positive attitude in interactions with internal and external clients
  • Collegial with a friendly demeanor and sense of humor