Intellectual Property Attorney for Strategic Value Enhancement
- Jan 01, 2023
- Jan 28, 2023
- Trademark Agent
- Contract Type
The Senior Counsel for StriVE to Win will report to Principal Counsel of StriVE to Win for the IP Dept. The position is responsible monetizing IP under direction of the Principal Counsel of StriVE through systematic identification of out–licensing and enforcement opportunities. The position is further responsible for (a) analyzing Sanofi's obligations under external contracts for potential actions or countermeasures to avoid costs or otherwise deliver savings, and (b) analyzing Sanofi's rights under external contracts for potential grounds to extract additional revenue or other value. The successful candidate will work transversally with other members of the IP Dept., other legal depts., R&D, IA, and BD, etc. to identify and evaluate opportunities with the potential to be monetized, including identification and assessment of relevant technologies and patents, evaluating impact and industry attractiveness of the patented technology, monitoring the competitive landscape and identifying potential licensees. He/she will also be involved in contacting and negotiating with potential licensees and will work in close cooperation with patent operations teams to manage agreements after signing. He/she must be an IP expert with experience in preparation and prosecution of patents, have in–depth legal and technical skills, and demonstrate a willingness to drive successful outcomes. He/she must have the ability to work collaboratively with all the stakeholders from the functions noted above. The person must have a high degree of drive, curiosity, creativity, and the desire to build their technological, business and negotiation acumen.
Identify and evaluate opportunities for and risks associated with patent licensing, enforcement, and other means of creating tangible value from IP
Collaborate closely with prosecution patent attorneys, litigation attorneys and scientists to identify opportunities for patent licensing, enforcement, and other means of creating tangible value from IP
Build and manage relationships with R&D, business, and IP and legal leaders to understand Sanofi's businesses and patent holdings, and align IP monetization strategies with relevant R&D activities, commercialization plans, and business and technology strategies
Provide pragmatic advice grounded in sound business and legal judgment regarding Sanofi's contractual obligations to external parties or external parties' contractual obligations to Sanofi, and analyze the contracts to determine whether Sanofi could stop making payments, reduce payments, or demand obligations to be fulfilled, as the case may be
Master tools and competitive intelligence resources to identify and evaluate monetization opportunities, and to develop valuation models for such opportunities
Prepare concise and cogent written materials and presentations facilitating smarter business decision–making
Identify, contact, and negotiate with potential licensees
Assist in drafting and review of license agreements
Cooperate with Global Patent Litigation Team in StriVE–related patent enforcement actions
Ensure proper management of agreements after execution
Contact existing licensees regarding due and upcoming payments
Interact with Legal Finance to ensure proper accounting of revenues
Learning from experience for continual improvement and contribution to define best practices and strategies for enhancing patent revenue
Take advice from and instruct outside counsel when appropriate and independently supervise their work
Keep informed of new laws, regulations, and industry trends affecting industry and licensing space, and assists with development of department–wide policies as needed
KEY COMPETENCIES AND QUALIFICATIONS
Substantive IP transactional experience, for example negotiating and drafting patent licensing agreements
Adaptable, open to new ways of working and finding creative solutions to overcome complex partnering challenges
Able to apply a legal and business acumen to a broad range of IP
Highly motivated and performance driven individual striving to excel in fulfilling and defining responsibilities, delivering quality work product and achieving desired results
Excellent verbal and written communication skills
Project management skills and the ability to work in cross–functional teams for scientific, legal and IP–related projects
Ability to manage workload and prioritize among a given number of active files at any one time
Team–focused – experience in working with colleagues in other functions (Legal, R&D, Finance, IA, etc.) with projects and activities in areas outside of his/her primary areas of responsibility as needed to contribute to a collegial and collaborative atmosphere
Challenges himself/herself in order to deliver even when it is not completely within his/her control
Business acumen; the ability to create and explain rationales and solutions–based approaches to enhancing value
For U.S. based candidates, JD from a US law school and USPTO registration
Graduate level degree in chemistry, biochemistry or a biologics field
At least 5 years of patent experience (prosecution, BD due diligence, litigation, client counseling, (non–)infringement and (in)validity evaluations/opinions)
At least 2 years of in–house biopharmaceutical industry experience providing IP advice
At least 2 years of experience negotiating and drafting complex IP transaction agreements
For U.S. based candidates, active membership and good standing in a state bar
Experience in basic economic, commercial and financial project valorization
OTHER INFORMATION RELATED TO THE POSITION
The position will be located in Cambridge, MA. Periodic travel is also a requirement – about 5%.
As a healthcare company and a vaccine manufacturer, Sanofi has an important responsibility to protect individual and public health. All US based roles require individuals to be fully vaccinated against COVID–19 as part of your job responsibilities.
Fully vaccinated, according to the CDC, an individual is considered to be "fully vaccinated" fourteen (14) days after receiving (a) the second dose of the Moderna or Pfizer vaccine, or (b) the single dose of the J&J vaccine. Fully vaccinated, for new Sanofi employees, is to be fully vaccinated 14 DAYS PRIOR TO START DATE.
Sanofi Inc. and its U.S. affiliates are Equal Opportunity and Affirmative Action employers committed to a culturally diverse workforce. All qualified applicants will receive consideration for employment without regard to race; color; creed; religion; national origin; age; ancestry; nationality; marital, domestic partnership or civil union status; sex, gender, gender identity or expression; affectional or sexual orientation; disability; veteran or military status or liability for military status; domestic violence victim status; atypical cellular or blood trait; genetic information (including the refusal to submit to genetic testing) or any other characteristic protected by law.
At Sanofi diversity and inclusion is foundational to how we operate and embedded in our Core Values. We recognize to truly tap into the richness diversity brings we must lead with inclusion and have a workplace where those differences can thrive and be leveraged to empower the lives of our colleagues, patients and customers. We respect and celebrate the diversity of our people, their backgrounds and experiences and provide equal opportunity for all.