Counsel, Intellectual Property

We are currently seeking a dynamic and highly motivated individual to join the SMPA IP team as Counsel, Intellectual Property. The role will encompass all aspects of patent practice including patent prosecution, counseling, and transactional IP support, with an emphasis on patent litigation in the pharmaceutical/biotech industry. As a partner and key business strategist, this individual will have significant experience in managing complex patent litigations (e.g., Hatch-Waxman ANDA) and other adversarial proceedings (e.g., IPR) in the pharmaceutical, biotechnology, or related life science industry. The position is fully remote, although periodic attendance may be required for U.S. in-house team meetings, and there may be some domestic and international business travel.

Job Duties and Responsibilities

• Conduct due diligence, analyze IP litigation risks, and develop litigation strategies including enforcement and defense.
• Collaborate with outside counsel regarding U.S. and foreign patent litigation to enable the development of creative strategies and drive deliverables to support business objectives.
• Manage caseload of patent litigations, appeals, and other adversarial proceedings, while advising on substantive legal strategy with foresight and appropriate risk tolerance.
• Work with internal teams to manage legal holds and oversee the gathering and preservation of documents and other information for discovery.
• Assist in identifying and preparing internal employees who may serve as witnesses during litigation.
• Work effectively with a cross-section of stakeholders within the organization to implement strategies and bring resolutions for disputes.
• In collaboration with outside counsel, draft, prosecute and manage worldwide patent portfolios related to small molecules and biologicals.
• Advise on all IP matters including FTO, patentability, inventorship, and portfolio exclusivity positions from patent and regulatory law considerations.
• Provide transactional IP support by drafting and negotiating for various types of agreements, including licensing agreements, clinical trial agreements, sponsored research agreements, material transfer agreements, contract research organization agreements, university licenses, CDAs, etc.
• Review abstracts, manuscripts, posters, and other information intended for public disclosure for possible IP concerns. 
• Manage trademarks and domains, address copyright questions and issues.

Key Core Competencies

• Sound judgment, independent thinking; acumen, drive and commitment to ethical conduct.
• Demonstrated ability to (i) understand and digest complex scenarios to identify relevant issues and risks, (ii) propose solutions that take into consideration the relevant business objectives and (iii) communicate those issues, risks and solutions clearly and concisely to lawyers and non-lawyers alike.
• Exceptional presentation and communication skills, both written and verbal, including the ability to communicate complex legal issues in a simple, understandable manner with colleagues of varying legal knowledge across the company.
• Ability to work independently and to be reliable, responsive and accountable.
• Team player with a commitment to developing strong collaborative relationships. Ability to organize, coordinate and motivate cross-functional teams.
• Ability to effectively manage outside counsel and adhere to budgets.
• Ability to handle multiple responsibilities simultaneously and still meet high quality and timeliness standards under pressure, and excellent organizational skills.

Education and Experience

• J.D. with 5+ years of patent litigation experience, with patent pre-trial and trial experience in U.S. District Courts.
• Preferred experience in managing Hatch-Waxman litigation matters.
• A scientific degree (undergraduate or graduate) with preference in biology, chemistry or biochemistry.     
• Must be currently admitted and in good standing to a State Bar or the District of Columbia Bar.
   

The role requires flexibility to have regular calls in the morning and/or evening with Japan colleagues, and also ability to travel worldwide, as needed, in conjunction with managing and resolving disputes.

The base salary range for this role is $210,400 to $263,000. Base salary is part of our total rewards package which also includes the opportunity for merit-based salary increases, short incentive plan participation, eligibility for our 401(k) plan, medical, dental, vision, life and disability insurances and leaves provided in line with your work state.  Our robust time-off policy includes flexible paid time off, 11 paid holidays plus additional time off for a shut-down period during the last week of December, 80 hours of paid sick time upon hire and each year thereafter.  Total compensation, including base salary to be offered, will depend on elements unique to each candidate, including candidate experience, skills, education and other factors permitted by law.

Disclaimer: The above statements are intended to describe the general nature and level of work being performed by people assigned to this classification. They are not to be construed as an exhaustive list of all responsibilities, duties, and skills required of personnel so classified. All personnel may be required to perform duties outside of their normal responsibilities from time to time, as needed.

Confidential Data: All information (written, verbal, electronic, etc.) that an employee encounters 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 Sumitomo Pharma America (SMPA) and affiliates are carried out with the "best" industry practices and the highest ethical standards.

It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment. An employer who violates this law shall be subject to criminal penalties and civil liability.

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.

Sumitomo Pharma America (SMPA) is an Equal Employment Opportunity (EEO) employer

Qualified applicants will receive consideration for employment without regard to race; color; creed; religion; national origin; age; ancestry; nationality; marital, domestic partnership or civil union status; sex, gender; affectional or sexual orientation; disability; veteran or military status or liability for military status; domestic violence victim status; atypical cellular or blood trait; genetic information (including the refusal to submit to genetic testing) or any other characteristic protected by law.