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Senior Counsel
Location : Illinois, Northbrook
Refer job # LMOJ337053
 
Purpose & Scope: Responsible for providing practical, timely and high quality IP support. Participates in cross functional teams, identifies legal and IP related business issues, provides legal options and analysis of possible solutions and gives recommendations for addressing critical issues so that business and legal objectives are met. Advises and consults with employees and management and educates clients about ongoing initiatives and proactive measures to reduce legal and IP-related business risks for the company. Essential Job Responsibilities: Assesses the patentability of new technologies developed by US project teams and prepares and prosecutes related patent applications. Ensures patent portfolios are aligned with and support overall commercial and development objectives. Understands the competitive IP landscape and counsels development teams accordingly. Collaborates with other members of the legal team to support IP aspects of contracts, litigation, and complex due diligence initiatives. Executes timely, comprehensive freedom to operate analysis and develops sound, tactical approaches to minimize third party IP risk to product initiatives. Participates in the creation and implementation of IP policies and procedures within the US IP team. Routinely engages in client counseling and education. Initiates and oversees administrative proceedings to invalidate third party patent rights (e.g. Post grant proceedings, opposition, etc.), where appropriate. Some travel as needed. Quantitative Dimensions: Responsible for operating within the IP budget, and any applicable project specific budgets. Organizational Context: Reports to Assistant General Counsel, IP Requirements Qualifications: Required: JD degree and admitted to practice before the USPTO and a state Bar. BS degree in chemistry, biochemistry or a related field. Minimum of 8 years IP experience in patent drafting and prosecution, FTO analysis, client counseling and agreement review, preferably at least 4 years in a corporate legal department of a pharmaceutical company. Ability to craft and execute complex patent strategies related to pharmaceutical development. Demonstrated knowledge and understanding of the pharmaceutical industry, including R&D, regulatory, manufacturing and commercial elements. Ability to work independently with minimal supervision and efficiently manage multi-dimensional projects in a fast-paced environment. Self-motivated, detail oriented, strategic thinker, able to manage multiple projects, appropriately prioritize and provide high quality, timely advice to clients. Business acumen with a strong track record of strategic thinking and behavior. Understanding of and ability to manage the cultural and logistical challenges of working with a foreign parent company and a global organization. Strong negotiation, oral and written communication, presentation, training, organizational and teamwork skills. Solid understanding of global patent laws and ability to advise clients from a global perspective, as well as a US perspective. Preferred: Experience with IPR proceedings preferred.
 
 
 
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