Sepracor
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Marlborough,
MA
Responsibilities include:
~Due diligence, licensing, and related transaction support
~managing prosecution of a portion of Sepracor’s patent portfolio including patent drafting and prosecution
~Management of trademark prosecution and counseling
~Interacting with scientists and researchers regarding inventions and invention records
~Supervising outside counsel with regard to US and foreign patent prosecution
~Literature and patent searches
~Client education relating to patent matters
~Review of third party applications, patents, and file histories
~Reporting status of portfolio to supervisors/Chief IP Counsel
~Coordinating with others in Legal Affairs-IP on overall strategy and portfolio management
~Assisting with all other patent-related matters, including inter partes matters, such as interferences and patent litigation
~Reviewing day-to-day R&D contracts and IP provisions in other contracts.
Ability to handle multiple tasks in a fast-paced environment is essential. Willingness to take initiative, be proactive, and good people skills are a must.
Essential Functions ·Manage assigned portion of Sepracor’s patent portfolio and ensure timely filing, responses, and payment of fees therein
·Supervise outside counsel with regard to drafting, filing, prosecution, and maintenance of U.S. & foreign patent portfolio
·Communicate regularly with scientists and researchers regarding on-going scientific work, inventions, and invention records
·Assist investigators and other Legal Affairs-IP personnel with preparation, docketing and review of Invention Records
·Participate in and oversee patent application drafting teams/schedules and ensure deadlines are met
·Keep investigators informed of key milestones in patent drafting and prosecution
·Ensure supervisor & Chief IP Counsel are regularly updated on status of inventions, application drafting & patent portfolio
·Perform and analyze searches relating to topics of interest or third party patent positions
·Participate in Patent Portfolio/Priority Review meetings, as necessary
·Participate in patent due diligence reviews or business development activities as requested by Chief IP Counsel
·Correspond with patent licensees/licensors, as necessary
·Assist with document collection and production, and other litigation/inter partes matters as needed
·Review and negotiate day-to-day R&D contracts and IP provisions in other contracts, as needed
·Work with Associate Director, R&D Contracts, on issues/matters relating to day-to-day R&D contracts & form agreements
·Formulate and/or implement worldwide trademark strategy for proprietary products and related counseling
·Perform various other patent-related duties or tasks as required or requested by supervisor or Chief IP Counsel
Minimum education requirements JD
Experience required 3 - 5 Years
Knowledge & skills (general and technical) Education
B.S. or higher degree in a chemical or biological science, a J.D. from an accredited law school, and registered to practice before the U.S. Patent and Trademark Office for at least 3 years.
Experience
Applicant must have 3-5 years experience with drafting and prosecution of U.S. patent applications in chemical & or biotechnology art units, and be proficient in performing computer-based structure, patent, and literature searches. Applicant must also have some experience with IP transactional matters, including licensing and due diligence. Preferably, applicant should have some litigation experience and a basic understating of the Hatch-Waxman Act. Some Trademark experience is preferred but not essential. Excellent writing, grammatical, and organizational skills are a must, as is basic competence in MS WORD, ACCESS, and EXCEL.
Other requirements (licenses, certifications, specialized training, physical or mental abilities required) Individual must be detail oriented, well organized, able to follow complex directions, and capable of working on many issues simultaneously. Must be flexible and able to work in a fast-paced, high production environment, and be able to interact confidently with all levels of personnel within the organization and outside counsel.
Confidential Data All information (written, verbal, electronic, etc.) that an employee encounters while working at Sepracor is considered confidential.
Compliance Achieve and maintain Compliance with all applicable regulatory, legal and operational rules and procedures, by ensuring that all plans and activities for and on behalf of Sepracor are carried out with the "best" industry practices and the highest ethical standards.
Mental/Physical Requirements Fast paced environment handling multiple demands. Must be able to exercise appropriate judgment as necessary. Requires a high level of initiative and independence. Excellent written and oral communication skills required. Requires ability to use a personal computer for extended periods of time.
Marlborough, MA
Marlborough, Massachusetts
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