The bioMérieux IP Department is a dynamic team engaged in a wide variety of projects at many levels of the organization. The Chief Patent Counsel position is an integral part of that environment where practicality, effective communication and collegiality are necessary components.
The Chief Patent Counsel position will report to the Corporate Director Intellectual Property and will be expected to supervise and manage the U.S. Patent Department(total of 4 people) in protecting the company’s intellectual assets and avoid/mitigate the risk of violating third party intellectual property rights.
The Chief Patent Counsel’s main accountabilities will be to:
- Proactively manage the U.S. Patent Department, including budget (including managing external legal service providers), workload, and developing efficient procedures and processes; proactively interact with patent departments in other countries for a cohesive patent strategy and coordinated, effective work teams
- Coordinate management of existing global Patents portfolio with Business Departement, Legal, Marketing and IP colleagues to align with commercial objectives.
- Conduct analysis for new products and processes, licensed products and processes, and company acquisitions.
- Contribute with senior management, General Counsel, Corporate Director of global Intellectual Property in developing an overall Intellectual Property strategy and advising on potential matters that arise.
- Prepare and prosecute patent applications and develop international portfolios for a technical area of responsibility; Lead the strategy for a technical area of responsibility in compliance with Corporate Intellectual Property process and procedures for the group bioMérieux in monitoring patents and brands.,
- Advise Intellectual Property, Marketing, technical library, communication departments, Research & Development, Legal and Business Development on litigation and conflict or possible litigation and conflicts.
- Negotiate, maintain and obtain technology agreements with third parties (as part of due diligence and acquisitions) and resolve conflicts regarding trademarks and patent designs and ensure compliance with obligations of technology transfer.
- Maintain knowledge and compliance with legislation concerning Patents and case law at an international level.
- Help the Corporate Director Intellectual Property to manage budget dedicated to IP matter in the America’s region and monitors external legal service providers. Submit budget to Intellectual Property global director. Animate the Patents Team by ensuring the development and training of employees.
- Work on transactional matters, including contract review, drafting and negotiation, with a primary initial focus on support of the IP department.
- Foster close communication and effective working relationships with general Legal Department Interpret legal and/or contractual obligations, and advising clients regarding contractual matters.
Required Skills/ Qualifications
Experience:
- 10 + years (patent, trademark or IP experience) experience in a law firm or the legal department of a company, including all aspects of patent preparation and prosecution, legal analysis/opinion work, and significant direct client support.
- Experience in a pharmaceutical or biotechnology company will be a plus for this position.
- At least 5 years of people management experience are required for this position.
- Previous experience in an additional technical field (e.g. software implementation, science technology) will be a plus.
- Working in an international or multicultural environment will be a plus.
Skills and Qualifications:
- Law degree (JD) and admission (in good standing) to a state bar.
- Registration to practice before the USPTO as a Patent Attorney.
- Experience in U.S Reexamination/Post Grant Review, European Opposition, U.S litigation, negotiation.
- Undergraduate, and preferably graduate, degree in life sciences. Knowledge increased in biochemistry and biology (including microbiology, immunology and/or molecular biology),
- Excellent communication skills and credibility so as to interact effectively and influence management at all levels; ability to successfully work within an international company to promote the Patent Department and fully deploy its depth of knowledge and skills to benefit the company.Ability to take responsibility for transactional work, including IP related provisions and negotiation; significant experience in contract interpretation; excellent analytical skills.
- Willingness to travel, including to France approximately once a year, as well as domestically a few times a year.
- Interest in developing the professional careers of the personnel within the IP Department.
- Pro-activity, vision and self-stability are keys to success for this position.
Contact
To apply, please email Anais Clement at: anais.clement@biomerieux.com.
Additional Info
Employer Type: Large Corporation
Job Location: Durham, North Carolina