Primary Function:
The IP Counsel will work on the activities of the Company with respect to prosecution, maintenance and defense of the Company's Intellectual Property (Patents, Trademarks and Clinical Data).
Major Responsibilities and Duties:
- Work with VP, Legal and Compliance GCR and US patent attorney to lead Outside Counsel and In-house teams in Legal support for the Company's Intellectual Property (Patents, Trademarks and Clinical Data) in such a manner as to maximize revenue and opportunity for the Company in both the near and long-term.
- In close coordination with the VP, Legal and Compliance, GCR, , and US patent attorney develop and execute the Company's patent strategy, including all points below.
- Draft, conduct and oversee all patent prosecutions for the Company, alone and together with Outside Counsel as required.
- Lead all IP reviews of proposed Business Transactions, including leading outside counsel in review of due diligence and drafting the IP portions of such business transactions.
- Provide opinions on patentability, validity, and infringement for Company and potentially licensed assets.
- Develop and execute on a plan to defend and enhance the Company's trademarks.
- Together with the VP, Legal and compliance, GCR , defend all challenges to the Company's Intellectual Property.
- Prepare Office Action responses, Appeal Briefs, and instructions to foreign associates for responding to office actions.
- Work with Partner's patent team for the in-license or out-license product patent issues.
- Establish communication with business/functional divisions to review and update company policies in view of the changing legal environment and commercial practice.
- Provide trainings for in-house business teams on legal topics and processes, as well as developing local templates to facilitate work efficiencies.
- Work with US patent attorney to deal with requests from Executive Team as needed.
- Coordinate the work of Outside Counsel in all the above areas.
Qualifications:
- Law Degree from reputable law school in PRC is a must, a US ABA-certified law school is a preference.
- Master plus degree in Biotechnology, molecule biology, biology chemistry, immunology, or similars.
- Experience with CNIPA is a must, experience with ANDA, PTAB and similar litigation is a plus.
- Experience with preparing and prosecuting patent applications related to small molecules, polymorphs, pharmaceutical formulations, proteins/peptides, diagnostic methods, and medical devices.
- Experience and ability to provide opinions on patentability, validity, and infringement for Company and potentially licensed assets.
- 7 plus years of law practice experience in law firms or companies, with deep understanding of pharma business environment and challenges. Life Science or Healthcare industry experience required.
- Be professional and proficient in bringing insights on legal risk from both strategic and tactical level.
- Be able to provide pragmatic legal solution to business and cross-functional teams.
- Self-motivated, ability to work independently under pressure and prioritize multiple projects, and work effectively in a fast-paced, result-oriented environment.
- Good team player with good interpersonal skills and ability to interact with different levels of people throughout the company
- Good networking to leverage resources inside and outside to provide on-time and quality service.
- Professional level skills relevant to position in English and Mandarin.