Director, Patent Attorney

Employer
PureTech Health
Location
Boston
Salary
Competitive
Posted
May 31, 2023
Closes
Jun 28, 2023
Practice
Litigation
Contract Type
Permanent

Reporting to the Head of Intellectual Property, the Director, Patent Attorney will work in a fast–paced team environment on a broad range of intellectual property matters helping to build and maintain a strong IP portfolio protecting PureTech's platform technologies and drug development efforts. Working closely with scientists and management, this person should possess good business and legal sense and have a solid understanding of intellectual property laws and concepts related to clinical–stage biopharmaceutical business strategies and patents.

Key Responsibilities:

  • Work collaboratively with internal R&D and Business Development teams to identify and proactively solicit invention disclosures
  • Work closely with internal IP team to execute Company's IP filing and prosecution strategies on a global level
  • Liaise with external IP counsel and academic tech transfer offices to manage all aspects of US and foreign prosecution, including preparation, filing and procurement of patent applications
  • Engage with foreign agents to prosecute applications in foreign jurisdictions
  • Prepare substantive client and external counsel correspondence
  • Review proposed publications for impact on existing patent estate
  • Conduct prior art searches
  • Perform patent clearance and patentability studies, as well as other diligence–related projects
  • Participate in due diligence with in–house and outside counsel to evaluate IP portfolios
  • Ability to work independently to identify, analyze, and solve problems
  • Ability to prioritize conflicting needs and handle matters expeditiously, proactively and follow through on tasks until successful completion
  • Experience with prosecution and IP strategies related to clinical–stage small molecule drug development
  • Comfortable dealing with multiple projects at once and confident making value–added decision based on available information

Experience/Qualifications:

  • IP attorney licensed to practice before a State Bar and also before the USPTO
  • PhD in organic or medicinal chemistry
  • Experience working in–house in a company setting required, experience working in a clinical stage biotech or pharma company preferred
  • Experience prosecuting patent applications in the US and foreign jurisdictions
  • At least 15 years' experience managing an active prosecution docket with the ability to effectively prioritize prosecution projects to meet US and foreign patent office deadlines
  • Experience in managing and effectively communicating with a team of IP paralegals and administrators
  • Experience in handling complex IP matters in a regulated industry with the ability to effectively communicate IP prosecution strategy to upper management
  • Experience managing external counsel
  • Excellent research, writing, analytical and communication skills
  • Organized, independent and detailed oriented