POSITION TITLE: Senior Patent Counsel
POSITION SUMMARY:The Senior Patent Counsel (Organic Chemistry) will be responsible for working closely with the Chief Patent Counsel to manage the patent counsel function, ensuring maximum productivity and efficiency, and providing excellent service to internal customers including faculty and other scientific staff. This position offers the opportunity to work directly with world-renowned scientists and innovative technologies at the earliest stages of discovery, helping shape intellectual property strategy that supports groundbreaking advances in chemistry, biology, digital medicine, and translational science.
RESPONSIBILITIES AND DUTIES:- Prepare and prosecute assigned patent applications in field of expertise.
- Work with Chief Patent Counsel to develop IP prosecution strategies portfolio development, patent risk assessment, and commercialization opportunities.
- Interview inventors to collect disclosure information.
- Provide prosecution support for other staff attorneys and assist co-counsel in interference and litigation proceedings.
- Assist in management of Office of Patent Counsel (OPC) staff and projects.
- Review assigned contracts for IP-related issues including licenses, MTA, RFOA, NDA and collaboration agreements and utilize legal expertise to advise on recommendations for improvement.
- Manage assigned Authorizations of Unlicensed Matters
- Conduct prior art searches.
- Instruct outside patent counsel on licensed matters.
- Interface with Scripps Research employees of all levels including executives, faculty, and administrative staff
- Communicate and negotiate with outside companies, universities & institutes on patent-related matters.
- Execute documents on behalf of Office of Patent Counsel (OPC) for Scripps Research
- Provide support to Office of Technology Development (OTD) and TSRI legally in connection with licensing efforts and licensee compliance.
- Details of established essential functions for this position will be addressed/discussed during the interview process.
REQUIREMENTS:- D. in Organic Chemistry or similar field
- Juris Doctorate from an accredited law school
- Bar membership required, California Bar membership preferred.
- Must be registered with the U.S. Patent Office
- 5+ years' experience as a patent attorney specializing in organic chemistry-related patents.
- Prior experience successfully working with scientists on patent matters required.
- Prior experience using patent portfolio management and docketing software required.
- Prior experience managing multiple patent portfolios required.
- Prior experience managing legal staff preferred.
- Proficiency with Word, Chemdraw, PowerPoint and common chemical structure software
- Proficiency with searching databases: USPTO, WIPO, CAS and Reaxys
- Desire and ability to contribute where needed, regardless of level.
- While subject to change based on business needs, this is an on-campus position requiring a minimum of 4 days per week working onsite from our La Jolla campus, with flexibility to work 1 day per week remotely from home.
- While subject to change based on business needs, this is an on-campus position requiring a minimum of 4 days per week working onsite from our La Jolla campus, with flexibility to work 1 day per week remotely from home.
COMPENSATION:The expected hiring range for this position is $220,000 to $255,000/annually, commensurate with experience. Consideration will be given to experience that exceeds the listed requirements.
COMPREHENSIVE BENEFITS INCLUDE:- Employer Contributed Retirement Plan - Depending on eligibility, employees receive an employer contributed retirement plan (no employee contribution required) and the option to contribute to a 403(b) (which is similar to a 401(k) using your own pre or post-tax dollars)
- Full Suite of Health and Welfare plans including three medical plan options (including an HSA available option), dental, vision, life insurance, disability, EAP and more
- Access to Flexible Spending Accounts (Medical/Dependent Care)
- Competitive vacation and sick leave policies
- Free, on-site parking
The above statements describe the level of work performed and expected in general terms. The statements are not intended to list all the responsibilities, duties and/or skills required of employees so classified, and the content herein is subject to change due to the business needs of Scripps Research, with or without notice. Furthermore, nothing in this job description shall be interpreted to be in conflict with or to eliminate or modify in any way the employment-at-will status of Scripps Research staff.
