San Francisco, CA
The Position:
We are seeking an exceptionally qualified attorney for the role of Vice President, Intellectual Property within the Legal Department in South San Francisco.
In this role, you will lead our in-house team of attorneys, patent agents, and other professionals to secure legal protection for the Company’s intellectual property assets through patents, and to a lesser extent, trademarks and copyrights. You will be accountable for developing and implementing innovative patenting strategies that anticipate changes in the law, the business, and the external environment; responsible for managing the Company’s substantial portfolio of patents and patent applications, including advising on in-licensing and out-licensing opportunities and patent litigation matters; assuring the delivery of timely, high-quality legal counsel and work product to Research Early Development Organization (gRED) and to other clients; responsible for providing legal counsel and recommendations to senior executives and other business leaders on complex intellectual property law issues; collaborating with leaders of other Roche legal functions on matters involving shared responsibility, and implementing best practices for developing talent and building capabilities within the intellectual property law practice group.
Additional responsibilities will include:
Oversight of work done by the intellectual property law practice group on licensing agreements, research collaboration agreements, and other types of agreements;
Supervising and, when necessary, participating in the performance of intellectual property-related due diligence activities in connection with business transactions;
Providing support for patent litigations and other intellectual property disputes;
Advising the finance group on financial issues relating to intellectual property law matters, including royalty income and expense, and responding to auditors’ requests for information;
Identifying appropriate opportunities for our Legal Department to advocate on behalf of the company for changes in relevant intellectual property laws and regulations, e.g., through the filing of amicus briefs and submission of comments on proposed legislation and rulemaking; and
Managing external counsel relationships, including compliance with internal guidelines for fee arrangements, budgets, and billing
Ideal Experience and Education:
15+ years of experience in patent prosecution involving chemical or biotechnology inventions
Track record of success and good judgment in handling complex intellectual property matters
J.D. degree and an M.S. or a Ph.D. degree in chemistry, biochemistry, molecular biology, or similar field
Admission to a State bar or the District of Columbia bar
Registration to practice before the U.S. Patent and Trademark Office (USPTO)
Team management of attorneys/patent agents
Critical Competencies:
Strategic and Adaptive Intellectual Property Expert: In a high-stakes and dynamic intellectual property environment, you will inspire confidence by:
Anticipating changes in the law, business, and external environment, and developing innovative patent strategies to address and avoid potential disputes
Advising Research Early Development Organization (gRED) and other clients with timely, high-quality legal counsel and work product
Providing legal counsel and recommendations on the Company’s portfolio of patents and patent applications, as well as on in-licensing and out-licensing opportunities
Assessing the potential impacts that different courses of action will have on current or future strategies
Influential Communicator and Relationship Builder: Within a global, complex, and matrixed company, you will achieve results by:
Building relationships to ensure legal and business objectives have every opportunity of being met; engaging and influencing business leaders without direct ownership
Simplifying the complex and adapting to audiences with varying levels of legal fluency
Interacting with legal and business leadership, with the presumption that views will be well-formed, pragmatic, and communicated in a very professional manner
Communicating and advocating for the Company's position on intellectual property matters with legislators, government agencies, and industry organizations
Collaborating with leaders of other Roche legal functions on matters involving shared responsibility
Demonstrating excellent judgment, negotiation, and communication (verbal and written) skills
Courageous and Effective People Leader: In a competitive external market and supportive internal environment, you will continue to attract, develop and retain top IP talent by:
Modeling excellence and leading by example with both vision and humility
Encouraging smart risk-taking, questioning the status quo, and cultivating a culture that attracts and retains the best and brightest
Challenging, coaching, motivating, and mentoring a high-performing team of attorneys, patent agents, and staff to grow in their careers
TO APPLY – Please forward resumes along with compensation requirements to Amanda Sonus at asonus@pailingroup.com
Pailingroup.com
