Description

Reporting to the Head of Intellectual Property, the patent attorney will work in a fast-paced team environment on a broad range of intellectual property matters helping to build and maintain a strong IP portfolio protecting PureTech’s platform technologies and drug development efforts. Working closely with scientists and management, this person should possess good business and legal sense and have a solid understanding of intellectual property laws and concepts related to clinical-stage biopharmaceutical business strategies and patents.

Key Responsibilities:

• Work collaboratively with internal R&D and Business Development teams to identify and proactively solicit invention disclosures
• Work closely with internal IP team to execute Company’s IP filing and prosecution strategies on a global level
• Liaise with external IP counsel and academic tech transfer offices to manage all aspects of US and foreign prosecution, including preparation, filing and procurement of patent applications
• Engage with foreign agents to prosecute applications in foreign jurisdictions
• Prepare substantive client and external counsel correspondence
• Review proposed publications for impact on existing patent estate
• Conduct prior art searches
• Perform patent clearance and patentability studies, as well as other diligence-related projects
• Participate in due diligence with in-house and outside counsel to evaluate IP portfolios
• Ability to work independently to identify, analyze, and solve problems
• Ability to prioritize conflicting needs and handle matters expeditiously, proactively and follow through on tasks until successful completion
• Experience with prosecution and IP strategies related to clinical-stage small molecule drug development

Requirements

Experience/Qualifications:

• IP attorney licensed to practice before a State Bar and also before the USPTO
• PhD in organic or medicinal chemistry
• Experience working in-house in a company setting required, experience working in a clinical stage biotech or pharma company preferred
• Experience prosecuting patent applications in the US and foreign jurisdictions
• At least 5 years’ experience managing an active prosecution docket with the ability to effectively prioritize prosecution projects to meet US and foreign patent office deadlines
• Experience in managing and effectively communicating with a team of IP paralegals and administrators
• Experience in handling complex IP matters in a regulated industry with the ability to effectively communicate IP prosecution strategy to upper management
• Experience managing external counsel
• Excellent research, writing, analytical and communication skills
• Organized, independent and detailed oriented