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Senior Patent Counsel/Agent (Large Molecule), OMNI IP Group

Genentech
United States, California, South San Francisco
Nov 26, 2024
The Position

Genentech's Intellectual Property team is seeking a senior level patent counsel/agent (large molecule) whose passion lies in creating and leveraging game-changing IP strategies that enable Genentech to do now what patients need next. As a key business partner and strategist, this individual will be pushing the boundaries of what is possible in a highly competitive industry. This position reports directly to the Director and Assistant General Counsel, Neuroscience & Ophthalmology IP Lead in the Genentech Legal Department, and is based at our South San Francisco campus.

A hybrid working schedule of 3 days per week onsite is required. This position is not suitable for a fully-remote working arrangement. Relocation benefits are not available for this job posting.

KEY RESPONSIBILITIES:

Key responsibilities of this individual contributor role will include but not be limited to the following:

Managing Docket (Patent Preparation & Prosecution)

  • Driving strategic IP procurement and management of global intellectual property rights for individual large molecule (biopharmaceutical) candidates and products including drafting and prosecuting patent portfolios, licensing transactions, due diligence assessments, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies.

  • Managing and prosecuting active global dockets, including handling U.S. and foreign patent applications as well as post-grant proceedings (e.g., reexamination, reissue, post-grant review), including foreign oppositions and appeals, as they may arise.

  • Rendering due diligence assessments, freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation strategies for individual program molecules, technologies, tools and the like.

  • Identifying and exploiting new strategic opportunities and approaches by leveraging a deep understanding of patent law and a knowledge of the competitive landscape across the Genentech franchises and portfolio.

Providing Advice & Counsel

  • Partnering effectively with relevant stakeholders at all levels of the global organization and across all phases of research, drug development, and commercialization to provide clear, strategic business enabling strategies.

  • Influencing business leaders as a trusted advisor and thought partner.

  • Deploying in-depth patent and scientific expertise to provide education, guidance, and advice on patent law issues to scientists conducting research and other business stakeholders.

  • Maintaining and sharing expertise and knowledge on legal case law, rules, or regulations before the U.S. Patent & Trademark Office as well as other relevant jurisdictional IP offices.

Collaborating, Managing, & Supporting Teams

  • Partnering in all intellectual property-related transactions, adverse proceedings, and litigation activities related to individual's program responsibilities.

  • Participating in group, department, and cross-functional projects and initiatives where strategies, processes, operating standards, and/or practices are developed and deployed to ensure highest quality practices and execution for all aspects of IP portfolios in a high performing, agile team setting.

  • Sustainably building enduring, productive external relationships with outside counsel, third-party collaborators, and partners.

  • Ensuring that Genentech remains a great place to practice game-changing IP law, have fun, and make a difference for patients!

GENERAL COMPETENCIES:

Key competencies of this individual contributor role include, but are not limited to the following:

  • Respects and fosters a team and organizational culture that reflects a commitment to diversity, equity, inclusion, and community.

  • Exhibits poise under pressure, solution-oriented mindset, clear communication at all levels of an organization, effective collaboration across local and global teams, and active in-person presence with IP/Legal and business stakeholders.

  • Tackles new challenges with curiosity and a growth-mindset, effectively utilizing available resources, and an enthusiastic willingness to listen and learn from others.

  • Excels in working independently and proactively with minimal direction, strong organizational skills, and ability to prioritize and balance competing projects and responsibilities in a fast-paced and diverse global organization.

QUALIFICATIONS:

  • 7+ years of patent attorney/agent experience in life sciences patent prosecution, with majority of experience in patent application drafting and prosecution in a pharma/biotech corporate setting and/or representing such clients/matters in a law firm.

  • Admission to practice before the U.S. Patent and Trademark Office (USPTO) required.

  • A U.S. law degree (J.D.) and a current "good standing" admission to at least one U.S. state bar is required for attorney applicants.

  • An advanced degree in biological sciences such as biochemistry, molecular biology, or other area relevant to biopharmaceutical IP practice. A Ph.D. is highly desired.

  • Demonstrated experience and track record of success in:

    • Building and leveraging global IP portfolios for large molecule biopharmaceuticals at all stages of prosecution and enforcement;

    • Designing and executing complex freedom-to-operate analyses across different technologies and different jurisdictions;

    • Developing and communicating actionable risk mitigation strategies;

    • Experience in IP transactions and due diligence is a plus;

    • Experience in adverse IPproceedings, including but not limited to US litigation, is a plus;

    • Experience with small molecule global IP portfolios at all stages of prosecution and enforcement is a plus;

    • Experience in gene therapy, cell therapy, and RNA therapeutics is a plus.

The expected salary range for this position based on the primary location of California is $207,600 - $385,600 (patent counsel) or $180,300 - $334,900 (patent agent). Actual pay will be determined based on experience, qualifications, geographic location, and other job-related factors permitted by law. A discretionary annual bonus may be available based on individual and Company performance. This position also qualifies for the benefits detailed at the link provided below.

Benefits

Genentech is an equal opportunity employer, and we embrace the increasingly diverse world around us. Genentech prohibits unlawful discrimination based on race, color, religion, gender, sexual orientation, gender identity or expression, national origin or ancestry, age, disability, marital status and veteran status.

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