Patent Counsel / Patent Agent

Location
South San Francisco, California
Posted
Jul 15, 2021
Ref
Req# 2123
Hotbed
Biotech Bay
Required Education
Masters Degree/MBA
Position Type
Full time

Encoded Therapeutics Inc. is a biotechnology company advancing precision medicines for a broad range of genetic disorders. Our mission is to unlock new opportunities for viral gene therapy through genomics-driven discovery. We focus on delivering life-changing advances for individuals with genetic disorders not addressable with current approaches. For more information, please visit www.Encoded.com.

Reporting to the Head of Intellectual Property, Encoded Therapeutics is seeking a talented and experienced Intellectual Patent Counsel or Patent Agent, with experience in biotechnology patent preparation and prosecution, portfolio development, freedom to operate analyses, and third-party portfolio assessments. We seek an Intellectual Patent Counsel/Patent Agent with experience with early stage, clinical development, and/or marketed products as well as manufacturing and platform technologies. This individual thrives in a high-volume, fast-paced, high-performing and collaborative corporate environment.

Responsibilities:

  • Develop the overall IP strategy and execution for Encoded’s various therapeutic programs and platform technologies
  • Work closely with R&D teams to identify new inventions; draft, file, and prosecute patent applications to secure global intellectual property rights
  • Perform due diligence, patent searches and third-party portfolio assessments, freedom-to-operate, non-infringement, and validity assessments, and develop risk evaluation and mitigation strategies
  • Develop IP portfolio life cycle management strategies and potential generic competition defense strategies
  • Provide support in IP-related transactions, agreements, and adverse proceedings, including collaborations, licensing, M&A, and business development
  • Collaboratively work with Encoded stakeholders across all functions of the company, including research, manufacturing, clinical, regulatory, and business functions to maximize value for patients, shareholders and employees
  • Work with senior management to communicate the IP strategy to third parties and investors
  • Excellent oral and written communication skills
  • Strong initiative and follow through as well as a strong client service focus
  • Self-motivated and quick learner with the ability to work independently and collaboratively among cross-functional teams
  • Ability to work efficiently, prioritize workflow, meet deadlines and balance competing priorities that will change due to a fast-paced and rapidly evolving environment
  • Excellent analytical skills and scientific/technical expertise
  • A demonstrated ability to make decisions on incomplete information and in areas where a high degree of professional judgment is required
  • Have impeccable professional ethics, integrity and judgment
  • Be collegial, hard-working, confident, a self-starter and have a passion for results
  • Registered to practice before the U.S. Patent and Trademark Office
  • Patent Counsel applicants must be admitted, active, and in good standing with the California state bar, or with another state bar and registered, or eligible to register, as in-house counsel with the State of California
  • Five or more years of experience in biotechnology patent preparation and prosecution, patent portfolio development, freedom to operate analyses, and third-party portfolio assessments
  • Experience with early stage, clinical development, and/or marketed products as well as manufacturing and platform technologies

Preferred Qualifications:

  • An advanced degree in the biological sciences or other relevant scientific discipline, PhD preferred
  • Training at a leading IP law firm practice and time spent in-house
  • South San Francisco location.

  • Comprehensive benefits package, including competitive employer premium contributions
  • Meaningful stock option grants
  • PTO, sick time and holiday pay
  • Generous Parental Leave program
  • Pre-tax medical and dependent care programs
  • STD, LTD, Life and AD&D
  • Professional development opportunities
  • Team-building events
  • Fully stocked kitchen
  • Purple Tie dry cleaning service
  • Fitness center

Encoded is an Equal Opportunity Employer and prohibits discrimination and harassment of any kind. Encoded is 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 at Encoded are based on business needs, job requirements and individual qualifications, without regard to race, religion or belief, color, national origin, gender, status as a protected veteran, status as an individual with a disability, or any other status protected by the laws or regulations in the location in which we operate. Encoded will not tolerate discrimination or harassment based on any of these characteristics. Encoded encourages applicants of all ages.

If you need assistance or an accommodation due to a disability, you may call us at +1 650-491-0272.