Assistant General Counsel, IP

Position Summary:

The Assistant General Counsel (AGC), IP & Innovation, is a key legal IP role in the department, encompassing innovation-led agreements, transactions, licensing, enforcement matters, brand issues, policy development, operations involvement, and active client engagement.  Depending on the selected candidate, the role may also provide assistance with specific patent portfolio activities and development in IP matters including prosecution, portfolio management, etc.  The role will work closely with professionals across the global team and other functions.

Responsibilities:

• Responsible for counseling internal business clients and negotiating with external entities in relation to agreements, transactions, licensing, enforcement matters, brand issues, policy development, operations involvement, and risk mitigation solutions.
• Identifying IP asset opportunities and implementing actions to defend, protect, and enforce various IP assets and company rights, which may also include working with software and operation systems and governmental authorities, etc.
• Reviewing intellectual property-related clauses and rights issues in a variety of agreements with the ability and competence to extend beyond.
• Conducting IP due diligence, in connection with any potential business matters which may include licensing, CDAs, MTAs, MOIs, acquisitions, divestitures, competitive assessments, inbound and outbound technology and licensing, manufacturing, supply, and vendor agreements, etc.
• Resolving routine and moderately complex IP matters with minimal supervision
• Developing and reporting on associated competitive data analytics with client focus.

Skills:

• Demonstrated ability to perform successfully in cross-functional teams.
• Monitors and advises on competitive intelligence issues.
• Be able to handle multiple projects in a fast-paced environment and exercise sound legal judgment.
• Capable of providing legal and strategic guidance to senior management and functional organizational leadership.
• In addition to top-notch legal skills, must have excellent interpersonal, strategic thinking, communication, and organizational skills.
• Applies innovative problem-solving skills and judgment to assist in managing corporate risk.
• Delivers work products within business constraints in a demanding environment while balancing competing client requests.

Basic Qualifications:

• Chemical Engineering undergraduate degree.
• Juris Doctor or equivalent legal degree
• At least five to seven years in practice and experience in providing legal counsel on IP matters with a corporation and/or law firm.
• USPTO bar admission.
• Significant experience drafting and prosecuting patent applications in biochemical, small molecule API, polymorph, crystal form, molecular biological, immunology, pharmacokinetic, and/or pharmaceutical formulations space
• Comprehensive knowledge and understanding of US patent law & practice, Lanham Act, and related laws, regulations, and statutes concerning IP matters.
• Familiarity with IP systems in major jurisdictions.
• Active admission to practice / bar registrations.
• Qualified candidates must be legally authorized to be employed in the United States.

Additional Skills/Preferences:

• Advanced degree(s) in chemical engineering, chemistry, biochemistry, or equivalent.
• Familiarity with the animal health or crop science industry.
• Prosecuting patent and other IP-oriented applications directly with the USPTO & worldwide through our network of agents; directing agents, and junior and foreign associates.
• Performing FTOs, internal risk assessments, and identifying strategic asset life-cycle management recommendations.
• Significant experience drafting large molecule therapeutic patent applications.
• Prepares and prosecutes international patent applications.
• Strong business acumen and mindset toward collaboration.
• Previous in-house experience.
• Preferred prior litigation, IPR, opposition, M&A, and business development experience.
• Six Sigma certification.