Patent Counsel / Agent, Large Molecule

Genentech   •  

South San Francisco, CA

Industry: Business Services


5 - 7 years

Posted 334 days ago

This job is no longer available.

The Position

The Patent Counsel/Agent will help build the company`s large molecule global intellectual property portfolio through strategic planning and execution of patent preparation and prosecution. Partnering with clients across multiple functional areas, the Patent Counsel/Agent will build, maintain and defend the Company`s intellectual property interests. The Patent Counsel/Agent will develop in-depth expertise in particular areas of medicinal biology and provide guidance on patent law issues to business groups and scientists conducting research in those areas. The ideal candidate will prove himself/herself integral and invaluable to the business, as it continues to discover and explore innovative medicines and technologies to help patients.

Key Responsibilities Include:


Provide Advice & Counsel:
  • Provide clear, informed and sophisticated counseling to clients within Research & Early Development (gRED), Product Development (PD), Manufacturing (PT), Business Development and other functional areas through all phases of patient-focused drug research, development, and commercialization
  • Develop in-depth expertise in particular areas of large molecule drug discovery in order to provide guidance on patent law issues to business groups and scientists conducting research in those areas
  • Render legal opinions with respect to patentability, validity, and freedom to operate
Manage Docket (prep, prosecute, conduct due diligence):
  • Maintain a substantial and active prosecution docket of U.S. and foreign patent applications, with interference, reexamination, post-exam, and opposition practices as they may arise with prosecution
  • Prepare, file and prosecute patent applications, with a primary focus on the protection of inventions and patent prosecution relating to large molecule therapeutics
  • Conduct due diligence (including freedom-to-operate, infringement and validity analyses)
Collaborate, Manage, & Support Others:
  • Provide agreement support (including MTAs, CDAs, research collaborations, and licensing agreements)
  • Support intellectual property-related transactional and litigation work
  • At times, manage external relationships with outside counsel and collaborators, and interactions with global affiliates

Who You Are

Ideal Experience/Education:

  • 5+ years of Patent Counsel/Agent experience in active large molecule patent prosecution; 50% or more in patent application drafting and prosecution in a pharma or biotech therapeutics corporate setting and/or representing such clients in a law firm
  • Admission to practice before the U.S. Patent and Trademark Office (USPTO)
  • An advanced degree in biological science is required; Ph.D. preferred
  • A United States law degree (JD) is preferred
  • Agreement and transactional experience is desired

Critical Competencies:


Strategic Large Molecule Patent Expert: In a high stakes and dynamic patent environment, you will inspire confidence by:

  • Counseling clients on complex legal issues and potential implications to current or future strategies and molecule/medicine development
  • Prosecuting active and complex patent portfolios with respect to therapeutics in development or being commercialized
  • Demonstrating strong knowledge of domestic and international laws, regulations, and processes relating to patents
  • Collaborative Communicator: Within a complex and matrix company, you will advise on complex patent proceedings by:
  • Demonstrating excellent judgment, negotiation and communication (verbal and written) skills; able to simplify the complex and adapt to audiences with varying levels of legal fluency
  • Engaging and influencing business leaders without direct ownership
  • Collaborating with legal and business leadership, with the presumption that views will be well-formed, pragmatic and communicated in a very professional manner

Adaptive and Results-Oriented Performer: In an innovative and fast-paced environment, you will have delivered by:

  • Balancing competing priorities and managing an active patent portfolio; multitasking with ease
  • Working effectively both in a team and independently; at times, may manage external relationships with outside counsel and collaborators, and interactions with global affiliates

Job ID: 3407567029