Opening Details

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Description: In-House Associate Director, Patent Counsel

Position: In-House

Notes: We've been asked to assist our client, a publicly traded pharmaceutical company in New York, in locating a patent attorney at the Associate Director level to help in the development, protection, and management of the company's valuable intellectual property pertaining to bioprocess and manufacturing. The patent attorney will be responsible for patent activities relating to bioprocessing at all stages of the development pipeline including cell line technologies, purification, formulations, and media development. The patent attorney will be required to develop close client relationships with the relevant scientific and business groups and coordinate patent filings, trade secret protection, and administrative patent actions.

The patent attorney will also advise on emerging legal issues, including monitoring and reviewing case law and legislative developments, and is expected to contribute to administrative and legal projects intended to develop an IP Department displaying the highest legal and ethical standards.

Responsibilities: Identifying and capturing new inventions relating to bioprocessing; preparing and prosecuting global patent applications relating to all aspects of bioprocessing, including biologic processes, manufacturing, formulation, packaging and delivery; managing outside counsel on various projects as appropriate; conducting patent landscape overviews, freedom-to-operate analyses, validity assessments and patentability assessments in relation to the company's pipeline products, and communicating the results and analyses to senior members of the Law Department and other company senior management personnel; managing US and foreign administrative patent actions (e.g., oppositions, third party observations, and inter partes reviews; assisting in litigation activities as needed; supporting due diligence projects, agreements and transactional work, administrative initiatives, and policy questions

Must have a Ph.D. in the life sciences (e.g., molecular biology, cell biology, biochemistry or related disciplines) admitted the USPTO and licensed to practice law in at least one state (member of the NY bar or eligible for in-house licensure in NY); 4-8 years of experience in a law firm setting (with or without corporate law department experience) preparing and prosecuting patent applications in the biological arts; strong organizational skills and ability to manage multiple projects and competing priorities; ability to manage a large and complex docket with minimal supervision; exceptional communication skills, including presentation, interpersonal, writing and

Years Experience: (4 - 8)

Specialty: Biochemistry, Biological Engineering, Biological Sciences, Cell Biology, Molecular Biology

Bar Requirements: USPTO


Location: USA - NY - Westchester, USA - NY - White Plains

Date Opened: 10/22/2019

Code: 4505877

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I was contacted by Mitch in regards to an in-house opportunity that fit my level of experience and credentials. Mitch promptly followed up with me once I expressed interest. He took the time to answer every last question I had about the type of work the position would entail, the qualities that companies look for when adding additional in-house counsel, and how my current role would translate to this new opportunity. What struck me about Mitch was his total transparency. He did not hide any details, and made sure that I was fully informed about salary information, benefits, etc., so that I knew going in what to expect. I was completely prepared for my interview and knocked it out of the park, in large part to the extensive conversation and emails with Mitch. A few weeks later I was offered, and accepted the job! I would absolutely suggest Mitch to anyone looking to either fill an in-house position, or someone looking to make the transition to in-house or another firm. Thanks again Mitch!
In-house Counsel