Gilead Sciences is seeking a Senior IP Counsel — Patent Preparation & Prosecution to work in its Foster City, California headquarters. This position will report to a senior patent attorney of the Intellectual Property department and will be responsible for all aspects of patent application preparation and prosecution on a worldwide basis for at least one of Gilead's current therapeutic areas, which includes anti-virals, respiratory, oncology and inflammation, and cardiovascular. This position will work closely with R&D and other cross-functional areas, including scientists and management, to monitor the progress of Gilead's research and product development activities in order to provide clear and concise direction and solutions on a variety of IP issues, including evaluate freedom to operate with respect to third party patent rights, patentability assessments and assessment of third party patent rights.
This is an individual contributor position that provides the successful candidate with the opportunity to work on a wide range of IP issues in a growth-oriented pharmaceutical company. The successful candidate should be able to independently identify all of the legal issues in their day-to-day activities and be able to identify many of the legal and business issues associated with increasingly complex matters and, in doing so, begin to develop expertise in specific areas of the law and contribute effectively to legal and cross functional projects. The ability to counsel clients including scientists and management by providing clear, concise direction and solutions to the issues and needs is essential.
Essential Duties and Job Functions:
• Draft patent applications and their prosecution in the US and in foreign patent offices, with minimal or no supervision.
• Collaborate effectively with outside US and foreign patent counsel handling patent prosecution matters.
• Maintain a detailed understanding of products and technical developments through relationships within the Company and professional growth and development through seminars, workshops, and professional affiliations.
• Conduct patentability reviews.
• Conduct freedom-to-operate reviews
• Review and assist in drafting nondisclosure, research, license and other agreements involving the use, transfer, or ownership of IP.
• Counsel scientists and management regarding IP portfolio and strategy.
• Provide IP support to cross-functional areas for in-licensing and acquisitions.
• Through analysis and application of legal guidelines, supports IP project representatives on cross-functional projects.
• Responsible for independently researching routine issues with visibility to senior Company management with the ability to analyze, effectively communicate and defend analysis.
• Frequently interacts and collaborates with other functional areas in order to establish and optimize close working relationships.
• May participate in briefings with more senior members within legal regarding the process for delivering against assigned tasks and responsibilities.
Knowledge, Experience and Skills:
• Bachelors degree in chemistry with emphasis in organic chemistry, or a chemistry-related subject such as medicinal chemistry. A Ph.D. or M.Sc in chemistry, or a chemistry-related subject, is a plus. Other academics will be considered, particularly biological sciences.
• Juris Doctorate with admission to at least one State Bar, preferably California
• 12+ years of industry or law firm experience which includes 5+ years in Biotechnology or Pharmaceutical patent prosecution experience.
• Registered before the U.S. Patent & Trademark Office
• Experience with FDA Orange Book listings and related FDA matters, including ANDA litigation experience, a plus.
• At least five (5) years of patent preparation and prosecution experience in the pharmaceutical industry or pharmaceutical arts
• Excellent interpersonal and communication skills are necessary, including the ability to fluently speak, write and understand English.
• The successful candidate will be given considerable responsibility, and the ability to work independently with minimum or no supervision is essential.
• Ability to handle multiple tasks in a fast-paced environment is essential. Willingness to take initiative and be proactive; good people skills and flexibility are a must.
The candidate must be proficient in MS Office-based applications. The ability to conduct computer-based prior art searches, and patent family searches, is a plus.
Travel Requirements: occasional business trips within the U.S. or abroad may be required.
We are an equal opportunity employer. Apply online today by visiting this link: https://www.gilead.apply2jobs.com/ProfExt/index.cfm?fuseaction=mExternal.showJob&RID=10257&CurrentPage=1.
Employer Type: Large Corporation
Job Location: Foster City, California
Gilead Sciences is a biopharmaceutical company that discovers, develops and commercializes innovative therapeutics in areas of unmet medical need. The company's mission is to advance the care of patients suffering from life-threatening diseases worldwide. Headquartered in Foster City, California, Gilead has operations in North America, Europe, Asia and Australia.