Head of IP & Legal

San Mateo
Mar 01, 2023
Mar 25, 2023
Trademark Agent
Contract Type
Head of IP & Legal

Department: Corporate Operations

Employment Type: Full Time

Location: San Mateo, CA

Description The Role: BigHat Biosciences is looking for a dynamic and detail–oriented individual to head IP & Legal under the supervision of the Chief Business Officer. This person must have an interest in advancing our mission to design safer, more effective antibody therapies for patients using machine learning and synthetic biology.
The Head of IP & Legal oversees all legal and administrative matters related to BigHat's intellectual property portfolio and contractual agreements. The role regularly interacts with BigHat s interdisciplinary team of laboratory sciences, translational researchers, AI/ML and data scientists, and software engineers, as well as external partners to effect efficient execution of agreements and a proactive IP strategy. This person will provide general advising on various BigHat legal matters, and will work on the contractual activities such as matters involving: licensing, collaboration agreements, material transfer agreements, confidential disclosure agreements, and other partnership transactions. At BigHat we believe in titles that are commensurate with skill set, relative organizational impact, and value contribution; more experienced candidates are encouraged to apply, with the understanding that responsibilities and title would adjust as appropriate.
Primary Roles and Responsibilities
  • Develop and maintain a deep understanding of BigHat's platform, therapeutic pipeline, and research activities
  • Continually review and update BigHat's intellectual property strategy and effectively communicate implications to the team
  • Procures protection for research discoveries and proprietary rights in accordance with the IP strategy
  • Orients new team members to intellectual property and BigHat's confidentiality policies and procedures
  • Provides advice and counsel to BigHat Researchers.
  • Evaluates new technology disclosures submitted by BigHat scientists and engineers to determine patentability of technology or protection via trade secret or know how
  • In response to team requests, reviews manuscripts and other BigHat communication materials prior to their public disclosure
  • Oversees and runs the patenting process, including prosecution, filing, portfolio management and curation, and management of outside law firms and control of costs
  • Executes on the final decision for maintenance and abandonment of patents.
  • Oversees the maintenance and integrity of BigHat's intellectual property databases. Coordinates and maintains internal filing system of all agreements and other appropriate documentation related to intellectual property.
Additional Duties and Responsibilities for Candidates with Legal Degrees
  • Drafts, negotiates (as applicable), executes, and administers all agreements in partnership with the Chief Business Officer
  • Reviews incoming IP–related agreements that have been drafted by third parties.
  • Provides advice and counsel on miscellaneous legal issues, including trademark, copyright infringement concerns, conflict of interest, dispute resolution, and other general legal matters.
  • Acts as internal lead on BigHat legal matters and coordinates wtih external Counsel

Required Skills
  • Highest integrity, superb judgment, and the ability to proactively recognize and effectively communicate legal issues to teams with a variety of backgrounds.
  • Competency in managing a patent docketing database
  • Responsible, organized, and a problem solver
  • Possesses strong attention to detail, analytical, time management, organizational, communication, and interpersonal skills
  • Embodies BigHats's core values

Ideal Experience
  • JD Degree and admission to at least one state bar; registration with the US Patent Office
  • Bachelor's degree or equivalent, preferably in biology or chemistry
  • 5+ years of patent law experience in the pharmaceutical/biotechnology field, or an equivalent combination of patent and pharmaceutical/biotechnology industry experience
  • Significant experience applying a patent strategy within an organization, preferably from an in–house position
  • Excellent analytical, written, and verbal communication skills
  • Experience negotiating licenses and research partnership transactions, performing appropriate due diligence and successfully closing complex transactions