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Associate General Patent Counsel

Job Description

Job ID:
39467

Location:
10 Brookline Place West, Brookline, MA 02445

Category:
Operations

Employment Type:
Full time

Work Location:
Remote: occasional time on campus

Overview

Located in Boston and the surrounding communities, Dana-Farber Cancer Institute is a leader in life changing breakthroughs in cancer research and patient care. We are united in our mission of conquering cancer, HIV/AIDS and related diseases. We strive to create an inclusive, diverse, and equitable environment where we provide compassionate and comprehensive care to patients of all backgrounds, and design programs to promote public health particularly among high-risk and underserved populations. We conduct groundbreaking research that advances treatment, we educate tomorrow's physician/researchers, and we work with amazing partners, including other Harvard Medical School-affiliated hospitals.

The mission of the OGC IP team is to create and enforce the IP assets enabling DFCI innovation to reach patients.    As such, the OGC IP team is committed to provide world-class services reflecting the overall commitment to excellence in research, clinical care and innovation.  Reporting to the Chief IP Counsel, the Associate General Patent Counsel provides advice to DFCI, its executives, investigators, physicians, employees, and the Board of Trustees on a broad range of IP matters, including patentability analysis, patent drafting and prosecution, worldwide patent portfolio management, and overall IP strategy.  Additionally, the Associate General Patent Counsel supervises patent attorneys and paralegals, actively and strategically supports an internal docket as well as manages outside counsel to achieve positive outcomes.  The Associate General Patent Counsel is secondarily responsible to provide support across the IP team as needed across the department.   This position includes interaction with senior business leaders, medicate and scientific staff throughout the institution and outside companies.

Responsibilities

PRIMARY DUTIES AND RESPONSIBILITIES:

  • Lead and manage a team of IP attorneys and paralegals. This role is a “player coach.”  The Associate General Patent Counsel will be directly responsible for cases as well as managing a team of IP attorneys and paralegals. 
  • Prepare, file and prosecute patent applications before the US, EPO and other foreign patent offices. The split between internally supported work and externally supported work (outside counsel) is currently about 25:75.  This role will help lead us to roughly a 40:60 split. 
  • Direct and analyze patent searches and render opinions on validity, non-infringement and patent avoidance of third-party patents.
  • Actively and strategically develop and execute the IP strategy, e.g., claiming and filing strategy in a case and more broadly across the research program and/or patent portfolio, that supports innovation reaching patients through commercialization agreements.
  • Engage investigators, research scientists, and the Belfer Office for Dana-Farber Innovations to develop robust IP strategies and provide advice relating thereto.
  • Advise executive leadership, investigators, and the Belfer Office for Dana-Farber Innovations on IP matters.
  • Advise on regulatory exclusivities, including PTE and foreign counterparts (SPC), data package exclusivity and orphan drug exclusivity.
  • Initiate, draft and advise on Institute and department policies, procedures and other operational documents, including IP best practices for internal and outside counsel.
  • Provide leadership and training within the OGC IP team and across the Institute on IP policies and procedures.
  • Initiate, defend and manage post issuance proceedings such as post grant reviews, inter parts reviews and oppositions.
  • Stays informed of industry-specific regulations, standards and leading practices. Engage the external environment to influence the development of such law, regulations and practices.
  • Supervise, direct and support outside counsel in drafting, prosecuting and managing global patent portfolio consistent with best practices.
  • Collaborate with the Chief IP Counsel to achieve strategic objectives and goals. Oversee relationships with outside counsel to align with IP team objectives and expectations.
  • Advise the Chief IP Counsel on scientific and institutional matters.

KNOWLEDGE, SKILLS, AND ABILITIES REQUIRED:

  • Demonstrated knowledge of worldwide patent prosecution requirements and processes.
  • Demonstrated ability to effectively lead and mentor a team of IP attorneys and paralegals, fostering a collaborative and productive work environment.
  • Committed to excellence when handling preparation and prosecution of patent applications.
  • Team player, comfortable helping a colleague or receiving help from a colleague to meet the needs of the institution and values team and team member accomplishments as much as individual recognition.
  • Exceptional written and verbal communication skills.
  • Strong problem-solving and decision-making capability.
  • Discretion, diplomacy, and sound judgment.
  • Ability to persuade with informal authority across all levels of the Institute.
  • Excellent attention to detail, research abilities and analytic skills.
  • Exceptional organization skills and ability to prioritize a high volume of complex tasks.
  • Strong client service skills and professionalism.
  • Self-starter, demonstrated initiative within assigned duties but also within a broader IP team.

SUPERVISORY RESPONSIBILITIES:            Yes, manages team of IP attorneys and paralegals.

Qualifications

MINIMUM JOB QUALIFICATIONS:

Minimum Education:

  • Juris Doctor with admission to at least one state bar; registered to practice before the U.S. Patent & Trademark Office required.
  • Advanced degree in chemistry, molecular biology, biochemistry, or related discipline preferred but not required.

Minimum Experience:

  • 10 years of experience at nationally or regionally recognized law firms and/or in-house life sciences company legal departments required.
  • Extensive experience in drafting, prosecuting, and supporting robust IP portfolios and executing global IP strategies to advance innovation required.
  • Prior supervisory and / or leadership experience preferred.

At Dana-Farber Cancer Institute, we work every day to create an innovative, caring, and inclusive environment where every patient, family, and staff member feels they belong.  As relentless as we are in our mission to reduce the burden of cancer for all, we are equally committed to diversifying our faculty and staff.  Cancer knows no boundaries and when it comes to hiring the most dedicated and diverse professionals, neither do we. If working in this kind of organization inspires you, we encourage you to apply.

Dana-Farber Cancer Institute is an equal opportunity employer and affirms the right of every qualified applicant to receive consideration for employment without regard to race, color, religion, sex, gender identity or expression, national origin, sexual orientation, genetic information, disability, age, ancestry, military service, protected veteran status, or other characteristics protected by law.

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