Director, Patent Attorney
- Employer
- PureTech Health
- Location
- Boston
- Salary
- Competitive
- Posted
- May 31, 2023
- Closes
- Jun 28, 2023
- Practice
- Litigation
- Position
- Brand Protection
- 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