IP Alliance and Due Diligence Patent Counsel
Gilead
- Foster City, CA
- Permanent
- Full-time
- Experience in conducting due diligence investigations, including assessments of ex-US patent rights.
- Deep understanding of pharmaceutical patent practice, including
- Patent prosecution and patent portfolio management.
- Hatch-Waxman/BPCIA litigation.
- Regulatory data exclusivities, patent term extensions, and supplementary protection certificates.
- Strong contract and third-party relationship skills.
- Highly developed verbal and written communications skills to deliver clear and concise communications.
- Independently conducts and manages patent due diligence investigations, including the management of outside counsel. Responsibilities include, but is not limited to:
- Evaluating the patentability of target’s patent portfolio and assessing freedom-to-operate for target compounds and technology.
- Drafting IP due diligence opinions and presentations.
- Providing outside counsel all necessary legal and business information to achieve the business objective.
- Participates in negotiation of contracts in connection with transactional activities of commercial and/or developmental products.
- Coordinates and liaises with Alliance Management Team post-deal close and during the term of license and/or collaboration.
- Assists with integration activities post-deal close.
- Develop and execute creative patent prosecution strategies for U.S. and foreign patent portfolios.
- Delivers IP educational presentations to legal staff, researchers, and business people at Gilead.
- Requires a Juris Doctorate and admission before a State bar.
- 6+ years of industry or law firm experience, which includes 4+ years in Biotechnology or Pharmaceutical patent prosecution experience.
- Typically requires bachelor’s degree in Chemistry or Biochemistry (or related sciences).
- Registered before the USPTO.
- High proficiency in computer skills including Word, Outlook, Excel, and PowerPoint, etc.
- Experience with the iManage document management experience is preferred.
- Experience with docketing systems (e.g., CPI) is preferred.
- Candidates must possess the ability to work well with others in a team setting.
- Organizational skills, exceptional time management and attention to detail are a must.
- Business travel may be required.
- Eligible employees may participate in benefit plans, subject to the terms and conditions of the applicable plans.