Assoc. General Counsel, IP

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Rockville, Maryland
Rockville, MD 20850, USA

POSITION SUMMARY:

Relied upon for business as well as intellectual property decisions, and is expected to know a great deal about MSD. Must act responsively, set priorities, exhibit strong leadership skills, exercise independent judgment, work well within a team, and utilize the highest professional standards.

DUTIES AND RESPONSIBILITIES:

Provide a high quality level of professional, cost effective, proactive and responsive legal services to internal clients in the area of intellectual property.

• Manage the company's patent portfolio, including soliciting and evaluating invention disclosures, conducting patentability investigations, filing, prosecuting, issuing and maintaining patent applications and patents domestically and internationally in coordination with and through managing outside counsel.
• Where appropriate, enforce MSD's intellectual property rights through investigation of competitors' products and supporting negotiation of favorable intellectual property licenses and litigation.
• Analyze third party claims alleging intellectual property infringement by MSD's products or services, including conducting and/or managing infringement and validity investigations and supporting negotiation of favorable intellectual property licenses and defense of MSD in intellectual property litigation.
• Provide support to legal transactional team by analyzing and commenting of IP terms of various agreements.
• Provide legal advice on obtaining copyrights, protecting trade secrets and avoiding infringement of the copyrights and trade secrets of others.
• Manage the trademark process at MSD, including the acquisition of trademarks, advising and training on mark selection and use, conducting right to use investigations, and filing, prosecuting, issuing and monitoring trademark applications and registrations in coordination with and through managing outside counsel.
• Maintain up to date knowledge of the company's technology.
• Review company product literature, reports to customers and collaborators, and proposals to the government to ensure intellectual property in such disclosures is adequately protected.
• Meet promised deadlines for rendering advice or preparing documents, and be available when called on by management and staff.
• Proactively anticipate IP legal issues before they become problems by practicing preventive law and by early involvement.
• Provide training and written guidelines on the acquisition and preservation of intellectual property rights.
• Specific duties will vary depending upon departmental requirements

EXPERIENCE AND QUALIFICATIONS:

• Juris Doctorate degree from an accredited law school and a current license to practice before a state bar is required.
• A minimum of 10 years of legal experience combined at either the USPTO, a law firm, or an in–house position prosecuting advanced biotechnology patent applications.
• Admittance to practice before the USPTO is required.
• Ph.D. or equivalent experience in biotechnology–related field.
• Ability to travel when necessary (domestic and/or international).

KNOWLEDGE, SKILLS AND ABILITIES:

• Strong work ethic and demonstrated ability to manage a high volume workload with minimal supervision.
• Excellent communications and interpersonal skills and the ability to work well within a team and to interact with all levels of management.
• Strong academic credentials.

PHYSICAL DEMANDS:

This position requires the ability to communication and exchange information, utilize equipment necessary to perform the job, and move about the office.

WORK ENVIRONMENT:

This position is performed in a traditional office environment.