Counsel, IP

About AbbVie
AbbVie’s mission is to discover and deliver innovative medicines that solve serious health issues today and address the medical challenges of tomorrow. We strive to have a remarkable impact on people’s lives across several key therapeutic areas: immunology, oncology, neuroscience, eye care, virology, women’s health and gastroenterology, in addition to products and services across its Allergan Aesthetics portfolio. For more information about AbbVie, please visit us at www.abbvie.com. Follow @abbvie on Twitter, Facebook, Instagram, YouTube and LinkedIn.

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 Counsel, IP reports directly to the IP Section Head supporting AbbVie’s aesthetics and eye care franchises. 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 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%

 

In this role, we’re looking for a leader who will:

• Act as an Owner
• Be Excellence Focused
• Act as an Influencer

Qualifications

You Bring:

• BS degree in Biochemistry, Chemistry or Chemical Engineering. Advanced degree 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 medical aesthetics and medical device 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 experience in 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.

Significant Work Activities
N/A
Travel
Yes, 15 % of the Time
Job Type
Experienced
Schedule
Full-time
Job Level Code
IC
Equal Employment Opportunity
At AbbVie, 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.