Intellectual Property Attorney-Digital Health/Medical Devices

Otsuka Pharmaceuticals   •  

Princeton, NJ

Industry: Pharmaceuticals & Biotech

  •  

Less than 5 years

Posted 33 days ago

Key objectives will be to identify and pursue strategies to capture innovation especially in digital health and medical device areas, including communicating IP guidance and risks to IP, legal and business teams. You'll develop and execute far-sighted IP strategy for projects and portfolios worldwide in line with company business goals. You may also work on business development deals or coordinate our response to legal changes.

Key Responsibilities Include:

  • Create and implement global strategic approaches toward building patent portfolios and providing value to business
  • Prepare and prosecute patent applications in the US and abroad, including effectively managing outside counsel as needed
  • Manage litigation work by outside counsel in the US and abroad
  • Provide IP and technical analysis in support of patent litigations
  • Manage all aspects of intellectual property estates in Otsuka's core and developmental therapeutic areas, such as digital health, digital therapeutics, and medical devices, including bioinformatics, medical systems, databases, data search and retrieval, and mobile applications
  • Research, evaluate and monitor patent portfolios of third parties, and develop FTO strategy
  • Develop and communicate IP guidance to stakeholders across the business, including within Clinical, Medical Affairs, Business Development, Commercial, Marketing, and Legal Affairs
  • Support intellectual property-related transactional work
  • Develop an understanding of the Otsuka's technology, scientific and business strategy to develop and prioritize IP strategies and to identify IP-related risks; advise company management and stakeholders on IP strategies and risks
  • Perform other legal, administrative and corporate duties upon request
  • Work collaboratively and strategically with members of IP department in related companies
  • Review and negotiate contracts for collaboration with third parties regarding IP matters

Qualifications

  • Doctor of Jurisprudence (J.D.) or equivalent degree is required
  • Licensed US Attorney, USPTO Registration Number required
  • Undergraduate is required, advanced degree preferred in the life sciences, clinical sciences, bioinformatics engineering; or related discipline
  • Minimum of 3 years of relevant experience with technology and/or life science industry in IP portfolio development, including preparing patents for electrical engineering, software, mobile computer systems, database architectures, data science, and artificial intelligence and machine learning, preferably in the context of clinical medicine, medical devices, and/or digital health required
  • In-house experience including reviewing and negotiating contracts for collaboration with third parties regarding IP matters required
  • Experience in the biotech and/or pharmaceutical industry preferred
  • Experience of managing external service providers preferred
  • Experience with global patent prosecution required.
  • Experience with re-examination, inter partes reviews proceedings, and litigation strongly preferreda
  • Ability to take initiative to complete tasks, manage risks and ability to identify problems and work to implement solutions
  • Ability to manage multiple tasks and projects with rapidly changing priorities
  • Outstanding organizational skills, attention to detail and effective oral and written communication skills
  • Ability to exercise good judgment regarding the interpretation of policies, development of procedures, and selection of appropriate courses of action
  • Ability to work in a team and assist others as needed
  • Up to 25% travel is required based upon business needs.