AbbVie

Counsel Intellectual Property

Employer
AbbVie
Location
CA, United States
Posted
Nov 10, 2020
Ref
202413
Required Education
Bachelors Degree
Position Type
Full time
Envision working with energetic colleagues and inspirational leaders. Now, place yourself in that mix; leading discussions, asking the right questions and driving results.

What Your New Manager Wants You To Know

The Intellectual Property Counsel reports directly to Senior Patent Counsel. Responsibilities include advising the company on IP issues, developing and coordinating IP strategy, and supervising outside counsel. This position works on a broad spectrum of IP issues, and specific duties include drafting and prosecution of patents, domestic and international, patentability, freedom-to-operate and validity opinions, patent oppositions, collaboration and licensing agreements, IP due diligence and M&A support, and litigation support.

YOU ARE more than just a title, YOU ARE...

A strategic thinker: align and excite internal stakeholders to facilitate success through strong leadership, strategic thinking and personal drive.
First class team player: collaborate across multiple disciplines to ensure compliance and ability to influence cross-functional teams and senior leadership.

You Will

  • Manage and prosecute docket of multiple patent portfolios.
  • Communicate with research and development teams regarding identification and development of IP supporting new products.
  • Advise commercial teams on all aspects of pharmaceutical, regulatory and patent law, including exclusivity periods, potential launch dates, etc.
  • Support M&A teams regarding IP due diligence and IP-related transaction support.
  • Manage external counsel, including work product, budgets, and invoices.
  • Communicate key matters and issues to VP, Intellectual Property.
  • Have the ability to travel up to 15%


Qualifications

You Bring

  • BS degree in Molecular Biology or Biochemistry. Advanced degree strongly preferred.
  • Possession of a Juris Doctorate from a major accredited Law School, a member of at least one state bar and registered to practice before the USPTO.
  • Minimum of four (4) years of experience drafting and prosecuting patent applications and IP counseling with a law firm or in-house within a pharmaceutical company.
  • Experience with IP development of small molecule, polymer, and biological products in ophthalmology and/or CNS fields preferred.
  • Strong knowledge of US and foreign patent office procedures and practice.
  • Familiarity with Food, Drug and Cosmetic Act and related regulations.
  • Substantial experience in domestic and foreign patent prosecution, as well as European opposition practice.
  • Experience in IP due diligence and IP related transactions.
  • Experience in a wide range of IP matters in areas including patent origination and drafting, freedom to operate patentability, non-infringement and invalidity opinions, licensing, and internal processes around IP development.
  • Strong negotiation skills
  • Expert-level research skills
  • The ability to work independently.


In this role, we're looking for a leader who will:
  • Act as an Owner
  • Be Excellence Focused
  • Act as an Influencer


Job Type
Standard

Schedule
Full-time

Equal Employment Opportunity
At Allergan, we value bringing together individuals from diverse backgrounds to develop new and innovative solutions for patients. As an equal opportunity employer we do not discriminate on the basis of race, color, religion, national origin, age, sex (including pregnancy), physical or mental disability, medical condition, genetic information gender identity or expression, sexual orientation, marital status, protected veteran status, or any other legally protected characteristic.