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Associate General Patent Counsel - Biotechnology

Dana-Farber Cancer Institute

Job Description

Job ID:
29371

Location:
10 Brookline Place West, Brookline, MA 02445

Category:
Operations

Employment Type:
Full time

Work Location:
PTL Remote: 2-3 days remote/wk

Overview

The Assistant General Patent Counsel, a member of the Office of General Counsel, provides legal representation to DFCI, its executives, investigators, physicians, employees, and the Board of Trustees on a broad range of IP matters.  The position reports to the Chief IP Counsel and includes responsibility for all aspects of patent protection, including patent drafting and prosecution, worldwide patent portfolio management, overall IP strategy and patentability analysis.   Additionally, this position includes extensive interaction with senior business leaders, investigators, medical and support staff throughout the institution, outside companies and outside counsel.

Located in Boston and the surrounding communities, Dana-Farber Cancer Institute brings together world renowned clinicians, innovative researchers and dedicated professionals, allies in the common mission of conquering cancer, HIV/AIDS and related diseases. Combining extremely talented people with the best technologies in a genuinely positive environment, we provide compassionate and comprehensive care to patients of all ages; we conduct research that advances treatment; we educate tomorrow's physician/researchers; we reach out to underserved members of our community; and we work with amazing partners, including other Harvard Medical School-affiliated hospitals.

Responsibilities

PRIMARY DUTIES AND RESPONSIBILITIES:

  1. Prepare, file and prosecute patent applications before the US, EPO and other foreign patent offices.
  2. Engage investigators, research scientists, and the Belfer Office for Dana-Farber Innovations to develop robust IP strategies and provide advice relating thereto.
  3. Provide advice and support (drafting, reviewing and/or negotiating) to the Belfer Office for Dana-Farber Innovations on DFCI licensing activity.
  4. Direct and analyze patent searches and render opinions on validity, non-infringement and patent avoidance of third-party patents.
  5. Advise on regulatory exclusivities, including PTE and foreign counterparts (SPC), data package exclusivity and orphan drug exclusivity.
  6. Draft and advise on Institute policies, procedures and other operational documents.
  7. Initiate, defend and manage post issuance proceedings such as post grant reviews, inter partes reviews and oppositions.
  8. Stay informed of industry-specific regulations, standards and leading practices.
  9. Direct outside counsel and oversee their work.
  10. Advise the Chief IP Counsel on scientific and institutional matters.

 

KNOWLEDGE, SKILLS, AND ABILITIES REQUIRED:

  • Demonstrated knowledge of worldwide patent prosecution requirements and processes.
  • Committed to excellence when handling preparation and prosecution of patent applications.
  • Exceptional written and verbal communication skills.
  • Strong problem-solving and decision-making capability.
  • Discretion, diplomacy, and sound judgment.
  • Ability to persuade with informal authority across all levels of the Institute.
  • Excellent attention to detail, research abilities and analytic skills.
  • Exceptional organization skills, superior attention to detail and ability to prioritize a high volume of complex tasks.
  • Strong client service skills and professionalism.
  • Self-starter, demonstrated initiative within assigned duties but also within a broader IP team.
  • Team player, comfortable helping a colleague or receiving help from a colleague to meet the needs of the institution.

Qualifications

Minimum Education:

  • Juris Doctor from an accredited law school required.
  • PhD in chemistry, molecular biology, biochemistry or related discipline preferred but not required.

Minimum Experience:

  • 5 years of experience at a nationally or regionally recognized law firms and/or in-house life sciences company legal departments required.

License/Certification/Registration:

  • Juris Doctor with admission to at least one state bar; registered to practice before the U.S. Patent & Trademark Office required.

Dana-Farber Cancer Institute, we work every day to create an innovative, caring, and inclusive environment where every patient, family, and staff member feels they belong.  As relentless as we are in our mission At to reduce the burden of cancer for all, we are equally committed to diversifying our faculty and staff.  Cancer knows no boundaries and when it comes to hiring the most dedicated and diverse professionals, neither do we. If working in this kind of organization inspires you, we encourage you to apply.

Dana-Farber Cancer Institute is an equal opportunity employer and affirms the right of every qualified applicant to receive consideration for employment without regard to race, color, religion, sex, gender identity or expression, national origin, sexual orientation, genetic information, disability, age, ancestry, military service, protected veteran status, or other groups as protected by law.

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