Senior IP Attorney - Summit Therapeutics Sub, Inc.

Job Title: Senior IP Attorney

Department: Legal

Location: Miami, FL or Menlo Park, CA

Overview of Role:

The Senior IP Attorney reports directly to the VP, Head of Legal and has primary responsibility for the strategic direction and management of the intellectual property estate of the company. This responsibility includes, but is not limited to, performing and/or working with outside counsel on the preparation, filing, prosecution, and maintenance of patents/patent applications and trademark applications/registrations of the company; pro-actively evaluating, devising and implementing strategies to strengthen the company’s patent portfolio and improve its alignment with the company’s research & development, manufacturing/supply, and clinical programs; preparing freedom-to-operate and patent validity analyses/opinions and advising management on third party and/or competitor patent infringement risk; preparing patentability assessments and advising on patent filings.

Additionally, this individual will be responsible for performing fast-paced IP analysis in various company due diligence projects. The position will coordinate closely with research, development, manufacturing and other business functions to ensure intellectual property protection of the company’s product portfolios. The position will provide IP/legal review/clearance on all abstracts, manuscripts, slide presentations, and other releases of scientific/medical information prior to release outside of the company. This position will also assist in the review and negotiation of IP provisions in various company contracts

Role and Responsibilities:

• Assist in overseeing the intellectual property function within the Legal Department and provide strategic direction and management of the intellectual property estate of the company
• Work closely with internal scientists/researchers/licensors for the patent protection of new technology, including the preparation of patent applications, amendments, responses to office actions, declarations, and other submissions to patent offices
• Perform and/or instruct outside counsel who may performs the preparation, filing, prosecution, and maintenance of patents/patent applications and trademark applications/registrations for the company
• Draft patent applications and claim sets
• Conduct FTO searches and patentability searches
• Identify, assess and make IP recommendations as to inventions
• Proactively identify and resolves intellectual property issues (including patent infringement risk) that may affect the company
• Work closely with external licensors/partners to ensure good communication and collaboration among the partners regarding the filing, prosecution, and maintenance of patents/patent applications and trademark applications/registrations or other IP issues relating to the partnership
• Prepare opinions on (in)validity and (non-)infringement of third-party patents and advise management on such issues
• Directly handle and/or manage and instruct outside counsel on IP strategy in any, interference, opposition, re-exam, inter parties review or post-grant review proceedings
• Work closely with internal stakeholders and external partners to provide IP/Legal review/clearance ·on all abstracts, presentations, manuscripts, prior to submission or presentation
• Develop strong working relationships with functional groups and project teams
• Perform intellectual property analysis in support of due diligence projects, including evaluating and advising management on the patent and other intellectual property issues
• Provide intellectual property advice in support of the activities of Business Development and other functional groups in the company
• Conduct competitive intelligence searches
• Proactively develop and/or implement approaches to enhance efficiency and cost- savings related to IP administrative matters
• Handle patent docketing and annuity and maintenance fees
• Develop and effectively manage IP department budgets
• Serve as the primary legal liaison for manufacturing/supply agreements, review and advise on intellectual property provisions in various contracts, including, but not limited to, collaboration and development agreements, license agreements, sponsored research agreements, clinical trial agreements, ISTs, technology transfer agreements, materials transfer agreements, master services agreements and related statements of work, and vendor and service contracts and related work orders
• All other duties as assigned

Experience, Education and Specialized Knowledge and Skills:

• U.S.P.T.O. registration is required
• A PhD or bachelor’s degree in molecular biology, chemistry, or the equivalent, is required
• JD plus 7+ years of experience as patent attorney (either in-house, or a combination of in-house and law firm); experience working in the biotechnology industry is required.
• Expertise in drafting and prosecuting biological, preferably antibody patents or related patent applications is required and chemistry patents/applications
• Experienced in conducting FTO and patentability searches
• Contract drafting and negotiation experience
• Strong collaborative skills, able to build partnerships and alliances internally and with external partners at all levels of the organization
• Management/supervisory experience
• Excellent critical thinking, and the ability to analyze scientific data, is required
• Post grant and inter parties review experience and/or IP litigation or opposition experience is preferred
• Familiarity with sciFinder is preferred

The pay range for this role is $260,000 to $285,000 annually. Actual compensation packages are based on several factors that are unique to each candidate, including but not limited to skill set, depth of experience, certifications, and specific work location. This may be different in other locations due to differences in the cost of labor. The total compensation package for this position may also include bonus, stock, benefits and/or other applicable variable compensation.

Summit does not accept referrals from employment businesses and/or employment agencies in respect of the vacancies posted on this site. All employment businesses/agencies are required to contact Summit’s human resources department to obtain prior written authorization before referring any candidates to Summit.