Patent Counsel or Patent Agent

Theravance Biopharma - South San Francisco, CA4.5

Full-timeEstimated: $94,000 - $120,000 a year
Skills
Position Overview:
This position is in the Company's patent department and reports to the Vice President, Legal & Chief Patent Counsel. The patent department prepares and prosecutes patent applications worldwide and counsels the Company on all types of intellectual property matters. The successful candidate will be responsible for a wide range of intellectual property-related activities with an emphasis on patent preparation, prosecution and counseling R&D personnel.

The successful candidate will be bright, self‐driven and highly motivated, and will work effectively on cross-functional R&D and business teams. Primary duties and responsibilities will depend on training, education and experience.

Primary Duties & Responsibilities:
Prepares, files and prosecutes domestic and foreign patent applications

  • Works closely with research, development and clinical teams to identify new inventions
  • Prepares and files new patent applications
  • Develops worldwide filing and prosecution strategy for patent applications
  • Prosecutes patent applications in the USPTO
  • Instructs foreign agents on patent prosecution outside the U.S.
  • Oversees and directs outside counsel as needed
Identifies and evaluates IP issues including freedom-to-operate

  • Directs and evaluates freedom-to-operate studies
  • Analyzes third party patents and patent applications
  • Works with outside counsel to obtain infringement and validity opinions as necessary
Provides counseling and training on IP issues

  • Advises R&D on IP strategy for research programs and product candidates
  • Educates R&D personnel on IP topics
  • Reviews Company publications and presentations for IP content and disclosures
Supports business development activities relating to IP

  • Participates in IP due diligence for potential licensing & partnership deals
  • Works with existing external partners on IP matters
Supports in-house corporate attorneys

  • Works with in-house corporate attorneys on IP aspects of agreements
Qualifications & Skills:
  • Registered to practice before the USPTO
  • J.D. degree optional (if J.D., then admitted to practice law in at least one state)
  • At least three years of patent experience including preparation and prosecution
  • Working knowledge of organic or medicinal chemistry
  • An advanced degree in chemistry is preferred
Desired Traits:
  • Self‐starter with a strong work ethic
  • Comfortable in a growing and changing company
  • Resourceful in developing new strategies to effectively support clients
  • Strong multitasker and time manager
  • Excellent written and verbal communication and interpersonal skills
  • Attentive to detail
  • Excellent judgment and problem-solving abilities
  • High degree of professionalism
  • Strong ethical standards
  • Strong teamwork ethic
  • Positive attitude in interactions with internal and external clients
  • Collegial with a friendly demeanor and sense of humor