Our client, a high growth life science company, is seeking an experienced attorney to serve as their sole in house counsel. This role will be responsible for leading corporate intellectual property, strategic and tactical legal initiatives globally. In addition, the General Counsel will advise senior management with effective advice on company strategies and their implementation related to Intellectual Property issues, manage the legal function, and oversee the work of outside counsel. Additional responsibilities will include negotiating critical contracts and serving as a strategic business partner by providing advice and oversight in areas such as ethics, privacy, transparency, data collection and storage, and regulatory and governmental changes and compliance.
Responsibilities will include most of the following:
• Manage the company’s patent portfolio and participate in the development of patent strategies.
• Oversee delivery of legal services and resources to accomplish corporate goals, strategies and priorities.
• Advise the CEO and other senior corporate officers on a variety of issues.
• Participate in the formulation of general management policy as a member of the executive management team.
• Serve as key lawyer/legal advisor on all major business transactions, including acquisitions, divestitures and joint ventures.
• Oversee the selection, retention, management, and evaluation of all outside counsel.
• Identify proactive solutions that will eliminate or mitigate risks.
• Assist with due diligence investigations and licensing.
• Counsel management on various IP issues.
• Experienced in all aspects of merger and acquisition process.
• Ability to negotiate and draft a variety of agreements, including licensing, distribution, partnerships, contracts, and confidentiality agreements.
• Provide counsel and legal support related to administrative challenges to patent and trademark rights (interferences, re-examinations, post grant reviews, inter-parties reviews, oppositions, and cancellations).
• Manage and further develop our intellectual property function and play a central role in achieving growth through innovation for the company.
Candidates should have the following qualifications:
• Admitted to the New York State bar. Admission to the USPTO is preferred.
• Experience with cost-effective management of outside legal resources.
• Familiarity and understanding of biotech patent strategies and patent law.
• Experience in directing strategy and managing complex IP litigation cases.
• Broad, overview experience in intellectual property law, including patent law, licensing of IP rights and IP due diligence.
• Eight to twelve years’ experience as a practicing litigation lawyer, preferably initially with a prominent national law firm before moving to an in-house position.
• Experience in a biotechnology or pharmaceutical company is a plus.
• Exposure to or familiarity with the following areas of law: securities, antitrust, computer law and privacy.
• Experience dealing with the SEC and familiar with SEC filing requirements and compliance issues.
• Prefer a B.S. degree or higher in chemistry or biochemistry