Intellectual Property Counsel

Job Description

Purpose:
Our client is seeking an Intellectual Property Counsel to join their Princeton, NJ office (Hybrid). This role will report directly to the Director, Intellectual Property for North America.

As an attorney in the IP department, you will collaborate with internal and external stakeholders to design and implement IP strategies to advance company interest to provide affordable health care solutions. In particular, you will evaluate and work with universities, start-ups, and other companies in order to identify new technologies and innovative solutions that can be leveraged with company existing products or used to develop new products. In doing so, you will also collaborate with Company’s business, commercial, and R&D teams to develop, protect, and bring these products to market.

Responsibilities:
• Collaborate with external and internal partners to identify new business opportunities.
• Identify, evaluate and work with universities, start-ups, and other companies to identify technologies and innovative solutions to grow Company’s portfolio
• Conduct IP due diligence and provide IP support towards business development activities.
• Prepare and prosecute patent applications. Provide IP guidance on IP filing and prosecution strategy, including by collaborating with R&D on innovation.
• Conduct prior art, patentability, landscape and freedom-to-operate searches.
• Secure freedom-to-operate for Company’s products, including analysis of competitive IP landscape.
• Draft, review, and revise intellectual property related agreements.
• Advise internal stakeholders on all aspects of pharmaceutical patent law.

Qualifications / Skills:

• A Juris Doctor from a recognized, accredited law school and licensed to practice in New Jersey or in at least one other state with eligibility to apply for limited New Jersey in-house counsel legal license.
• Advanced Degree in chemistry, organic chemistry, biochemistry, or similar discipline required (MS or PhD).
• 2-3 years of experience working with life science, biotechnology, and/or pharmaceutical companies is strongly preferred.
• Experience with patent preparation and prosecution experience preferred.
• Experience with IP licensing and transactions preferred.
• Registered to practice before the U.S. Patent and Trademark Office.
• Exhibit leadership by example, effort and attitude, including the ability to work independently.
• Ability to work in Princeton, NJ office three days a week.
• Travel Requirement: Approximately 20%

Must be a U.S. citizen or lawful permanent resident of U.S. or otherwise authorized to work in the U.S. without requiring sponsorship now or in the future.