Responsible for managing and developing patent portfolio, patent preparation and prosecution, due diligence projects for both Prometheus and affiliated organizations.
Formulates and executes patent strategies as well as protection plans for key projects
Manages patent portfolio for both diagnostic and therapeutic strategies Manages and develop international patent portfolio
Manages relationship with outside counsel related to IP matters
Interfaces with various departments including R&D, Clinical Operations and Pharmaceutical Sciences to advise inventors and management on a variety of intellectual property matters
Helps develop litigation strategy as necessary
Responsible for drafting, filing and prosecution of patent applications
Performa due diligence including infringement and clearance analysis; review of prior art search reports
Works with internal research and development personnel and outside counsel on all patent related matters
Develops and implement offensive and defensive IP strategies
Conducts various patent searches
Conducts freedom-to-practice evaluation
Conducts invalidity analysis
Provides support for patent litigation
Assists with due diligence for new acquisition, investments and business development projects for Prometheus and Nestlé affiliated organizations
Provides timely counsel on intellectual property issues
Actively participate in the NHSc IP CoE for the US
Monitor patent activity of competitors and, when appropriate, file oppositions for re-examination / post-grant review of the patents of third parties to protect NHSc interests and patents. Analyze and, if appropriate, take legal action against potential patent infringements of third parties
Other duties as assigned
Position generally requires a Bachelor’s degree in a biological science or chemistry, a Doctoral degree (J.D.) preferred or equivalent and 8 + year experience drafting pharmaceutical and/or diagnostics patent applications, prosecution, strategic counseling, portfolio management, freedom to operate analysis, and intellectual property litigation. Also requires previous experience performing laboratory research and experimentation and at least 3 years in the pharmaceutical/diagnostic industry. An advanced degree in chemistry or a biological science is preferred. Requires excellent legal and communication skills, both written and verbal, strong project management, analytical and negotiation skills. High level of business acumen, presence, discretion, integrity, and ethics also required. Must possess creativity and success in strategizing, structuring and obtaining robust IP specific to the pharmaceutical/diagnostic industry which includes offensive and defensive patent protection. Registered to practice before the US Patent and Trademark Office.
Prometheus has achieved its impressive position within the specialty pharmaceutical and diagnostic technologies industry by recruiting and hiring individuals who are talented, highly motivated and show a passion for innovation. Our employees are dedicated to the development and commercialization of diagnostic and therapeutic solutions in the effort to revolutionize and individualize patient care. ...Therefore, we are proud to provide a workplace that is dynamic, collaborative, diverse, challenging and rewarding. Prometheus is proud to be an Equal Opportunity Employer with commitment to Affirmative Action for Minorities, Women, Individuals with Disabilities and Veterans.