Patent Agent / Sr. Patent Agent /Patent Counsel / Sr. Patent Counsel – Informatics

Job description

·  Job facts

Genentech's Intellectual Property team is seeking a collaborative and innovative patent attorney or agent to create game-changing IP strategies that will enable Roche and Genentech to do now what patients need next. As an IP team member, this individual is versatile and passionate in handling new ways to craft IP positions and protection for groundbreaking innovation supporting our personalized healthcare, digital health, and data science efforts. You will be working with scientists, attorneys, patent agents, and staff across a dynamic and diverse global organization pushing the boundaries of what is possible in a highly competitive industry. This position will be located in our South San Francisco campus and will report to the Senior Patent Counsel responsible for Informatics.

Position Scope and Key Responsibilities:

·  Guide invention harvesting, global patent preparation and prosecution, and portfolio development and management, individually and in cross-functional global teams for our personalized healthcare, digital health, and data science efforts.
·  Develop an understanding of the science, technology, and business strategy to inform both IP strategy as well as business decision-making processes.
·  Advise business stakeholders on IP strategies and risk, and innovate to find solutions and create business value in this dynamic and growing area of science and business. Carry out IP searching and/or landscaping, due diligence assessments, freedom-to-operate, and infringement and validity analyses as needed.
·  Provide IP diligence, advice, and strategy for IP transactions to business development and research in support of local and globally-driven collaborations, licenses, and acquisitions.
·  Foster strong, collaborative relationships with a diverse set of stakeholders across global sites and at all levels of the organization, and create efficient and effective processes for communicating, advising, and working with those stakeholders.
·  Direct and manage outside counsel, related budgets and where applicable negotiate rates, project fees, and timelines.
·  Cultivate a culture that reflects a strong commitment to diversity, inclusion, and community as part of an organization focused on bringing new insights and novel therapeutic options to patients worldwide.

Critical Competencies:

·  Experience and expertise in global patent portfolio preparation and prosecution for inventions involving software, computer systems, database architectures, mobile applications, data science, statistical analyses, machine learning, deep learning, digital health innovations.
·  Experience in life sciences, including therapeutic molecules, antibodies and related technologies is a plus.
·  Experience in adverse administrative patent proceedings such as IPRs, reissues, reexamination, post-exam, and EPO opposition practices is a plus.
·  Experience in patent litigation is a plus.
·  Exceptional communication skills that demonstrate consistent clear communication, both oral and written, to all levels of an organization as well as a willingness to listen and learn from others.
·  Experience and expertise in conducting patent database searches and rapidly parsing through large amounts of information to identify relevant material.
·  Ability to work independently and proactively with minimal direction.
·  Excellent judgment, pragmatism, and negotiation skills.
·  Strong organizational skills, keen attention to detail, and ability to prioritize projects and meet aggressive deadlines.
·  Proven record as an adaptive and results-oriented performer. This includes balancing competing priorities while managing IP portfolios, working effectively both independently and in global and cross-functional teams, and managing external relationships with outside counsel and collaborators.

Requirements:

·  5+ years of experience in creating, prosecuting, and advising on complex global patent portfolios and IP strategy.
·  Undergraduate or (preferably) advanced degree in mathematics, applied mathematics, computer science, computer engineering, systems engineering, electrical engineering, physics, bioinformatics, or computational biology; a strong technological aptitude for learning and working with a range of technologies.
·  If J.D., then admission to a U.S. State bar or the District of Columbia bar.
·  Admission to the United States Patent and Trademark Office Bar.
·  Solid knowledge of global intellectual property laws and practices.
·  Experience and proficiency with creating and using complex spreadsheets (e.g., Excel) and/or databases to manage large amounts of information.
·  Experience serving as a strategic legal advisor in a corporation is a plus.
·  Experience providing advice on complex licensing and/or other transactional matters is a plus.
·  Record of success in innovating and creating business value, fostering teamwork and collaboration with other teams, and influencing and resolving conflict.

·  Who we are

A member of the Roche Group, Genentech has been at the forefront of the biotechnology industry for more than 40 years, using human genetic information to develop novel medicines for serious and life-threatening diseases. Genentech has multiple therapies on the market for cancer & other serious illnesses. Please take this opportunity to learn about Genentech where we believe that our employees are our most important asset & are dedicated to remaining a great place to work.

Roche is an equal opportunity employer and strictly prohibits unlawful discrimination based upon an individual's race, color, religion, gender, sexual orientation, gender identity/expression, national origin/ancestry, age, mental/physical disability, medical condition, marital status, veteran status, or any other characteristic protected by law.