Boehringer Ingelheim, a large corporation in Duluth, GA, is seeking an Associate Director & Sr. Counsel, IP. As an employee of Boehringer Ingelheim, you will actively contribute to the discovery, development and delivery of our products to our patients and customers. Our global presence provides opportunity for all employees to collaborate internationally, offering visibility and opportunity to directly contribute to the companies' success. We realize that our strength and competitive advantage lie with our people. We support our employees in a number of ways to foster a healthy working environment, meaningful work, diversity and inclusion, mobility, networking and work-life balance. Our competitive compensation and benefit programs reflect Boehringer Ingelheim's high regard for our employees.
Provides legal services to Clients in Boehringer Ingelheim’s Animal Health division, typically at the Executive Director level and below. Level of counseling provided requires an in depth knowledge of U.S. patent law and practice as well as familiarity with patent prosecution practice in Europe and other jurisdictions. Duties include preparing, filing and prosecuting patent applications in the U.S. as well as managing and coordinating the global prosecution of Boehringer Ingelheim’s patent applications. Responsibility also includes drafting and reviewing intellectual property provisions in agreements and providing patentability and freedom to operate assessments of internal and third party intellectual property rights. In addition to one area of expertise (e.g., patents) must have begun developing skills and acumen in an additional area of law and have a clear understanding of the Animal Health or related business environment in which legal advice is rendered. Must utilize legal background, and strong knowledge of the business, to move the business forward by providing sound legal counsel and advice.
Duties & Responsibilities:
- Prepares, usually independently, legal documents, including letters, notices, legal opinions, contracts, patent applications, court/administrative filings, etc.
- Identifies inventions, prepares and files patent applications directed thereto.
- Prosecutes patent applications in the U.S. and instructs foreign agents in the prosecution of corresponding patent applications in their jurisdictions.
- Provides advice to clients on questions related to patentability, infringement and freedom to operate of third party intellectual property rights.
- Participate in intellectual property due diligence activities for in-licensing or acquisition projects.
- Will participate in and support patent oppositions and other post-grant administrative proceedings.
- Expert understanding of state and federal laws, regulations and policies in at least one specialized legal area; strong working knowledge of laws, regulations and policies in a second specialized legal area; ability to interpret and apply such laws, regulations and policies to inform business activities. Has ability to apply law to complex business situations.
- Influences clients by identifying and communicating to clients risks associated with complex business activities within lawyer's specialized legal area; helps identify risks in outside lawyer's specialized legal area; provides training and business advice to clients on applicable legal issues within lawyer’s expertise.
- Partners with clients by: looking beyond immediate business issue and identifying broader business purposes; proactively applies legal framework to both the specific business activity and the broader business purposes; developing alternative legal solutions to enable the achievement of successful outcomes.
- Usually takes the lead in negotiating on behalf of client to achieve solutions consistent with business objectives.
- Confers with other in-house and outside counsel where appropriate.
- Manages (either directly or indirectly) administrative assistants and other personnel within department. Mentors and/or trains more junior attorneys, paralegals, administrative assistants and/or other personnel within department. Is a member of multi-functional teams.
- Keeps current with evolving legal and business issues within lawyer’s expertise and client’s business environment.
- Juris Doctorate degree from an accredited law school; at least 6 to 8 years relevant legal experience; admission to at least one State bar.
- A background and education (preferably graduate degree) in a life science field such as biotechnology, molecular biology, chemistry, biochemistry or vaccine research preferred.
- Must be registered to practice at the U.S. Patent and Trademark Office (USPTO).
- Excellent organizational skills; demonstrates discretion and ability to maintain confidentiality of information.
Employer Type: Large Corporation
Job Location: Duluth, GA