Patent Agent

Our Cell Therapy client here in Boston, MA is growing and looking to bring onboard a Patent Agent!  Attorney will help build and manage the intellectual property affairs of the company and its subsidiaries.  They will have exposure to cutting-edge science and intellectual property innovation, involved in setting and implementing IP strategy and be a part of a growing team with opportunities for career development and leadership.  Other responsibilities include but not limited to: 

 

  • Work closely with VP, Intellectual Property to develop and implement the intellectual property strategy for the company’s pre-clinical and clinical programs
  • Interface regularly with R&D teams to evaluate and support development of new technologies, including cell therapies and gene therapies
  • Contribute to preparation and prosecution of new patent applications and maintenance of existing patent estate
  • Conduct IP due diligence for in-licensing and acquisition opportunities as well as internal programs
  • Advise the company on its rights and obligations under all IP contracts, including collaboration, licensing and other material agreements
  • Contribute to management of oppositions and other contested proceedings as needed
  • Manage trademark portfolio and strategy
  • Perform administrative intellectual property duties as needed, including docketing and organizational matters

 

Requirements:

  • Advanced degree (Ph.D. preferred) in immunology or related life-sciences discipline
  • Registered to practice before the U.S. Patent and Trademark Office
  • Minimum of 3 years experience in a leading law firm and/or corporation in patent preparation and prosecution in the biologics space
  • Experience with IP due diligence analyses (including freedom to operate analyses) and contested proceedings (e.g., litigation, oppositions, and IPRs) is a plus
  • Ability to read, analyze, and interpret scientific and technical journals, patent documents, governmental regulations, and legal documents. Ability to draft well-organized and understandable patent applications and responses to office actions. Ability to make persuasive scientific and legal arguments to patent examiners
  • Ability to write reports and business correspondence. Ability to prepare concise and understandable summaries of IP strategy for the scientific and business staff. Ability to effectively present IP and other legal information in one-on-one and small group situations to collaborators, clients, and other employees as well as to top management and public groups
  • Ability to understand scientific data presented in a variety of mathematical and graphical formats
  • Ability to apply business savvy, and a common sense understanding in negotiating and advising on complex intellectual property matters. Ability to identify issues, collect data, establish facts, and draw valid conclusions
  • Ability to identify laws and regulations that apply to a set of issues and facts and advise the company on how to apply such laws/regulations in a manner consistent with its interests