This position exists to provide strategic leadership and direction toward the goal of protecting and optimizing the value of the Company's Intellectual Property assets. The position will consolidate the US strategic management of patents, trademarks and the prosecution, defense and enforcement thereof. The position will also ensure global coordination with the patent team directed by Eisai Co., Ltd. ("ECL") in Japan to help develop an effective global IP strategy. In addition, the position exists to provide on-site management and direction of the US IP team in Andover, MA (6 attorneys, 3 paralegals and 3 LIS staff) in order to organized the team and maximize the team's contributions.
Primary job functions include:
Significant prior responsibility for identifying and proposing solutions relating to IP issues, opportunities and risks relevant to the pharmaceutical industry.
- Lead IP Attorney, with responsibilities for regional oversight of Americas' (US, Canada, South and Latin America) IP portfolio, including US patent and trademark prosecution, maintenance, defense and enforcement, including acting as US lead IP attorney ( with outside counsel support) on ANDA defense matters.
- Provide advice and counsel to the ECL IP/Legal Department on IP matters arising in the Americas region to ensure effective global coordination.
- Manage Team of IP attorneys, paralegals and IP research staff.
- Coordinate with Regulatory on IP issues (e.g., Orange Book listings).
- Serve as primary point of contact with other IP regional heads (EU and Japan/Asia).
- Keep General Counsel informed of significant legal issues, opportunities and challenges.
- Assist General Counsel in Office of General Counsel ("OGC") management and resource management, including participation on OGC Leadership Team.
- Primary responsibility to manage outside counsel relationships.
- Manages IP Budget, including outside counsel budget for US IP Department.
- Assist and coordinate development and implementation of global Intellectual Property ("IP") policies and their implementation in association with the Director of the ECL IP Department.
- Coordinate global IP enforcement matters in association with the Director of the ECL IP Department.
- Serve as lead strategic counsel for US. and ex-US Senior Management on Americas' IP Matters.
- Coordinate with global IP team in developing and implementing IP strategies and policies relating to Americas' patent and trademark prosecution, maintenance, defense and enforcement.
- Communicate IP strategies to departmental attorneys and staff, and support and supervise the implementation of such strategies across the organization.
- Coordination with manufacturing groups and formulation groups to protect relevant IP, including patents, know-how and trade secrets.
- Coordinate with US transactional attorneys on IP matters to support business development, licensing ad collaboration transactions, including coordination of IP due diligence efforts. Job Qualifications *15+ years as a practicing, licensed IP attorney with high level client contact and responsibility, or 10+ years as an attorney with 3+ ears relevant Patent Examiner or Patent Agent experience.
- Significant legal experience counseling on IP issues and defending IP, related to the pharmaceutical industry.
Prior supervisory experience reflected in past positions, including supervision of other attorneys.
- High level of Leadership and Managerial experience.
Significant team/project leadership reflected in past positions.
Management of departmental budget.
- Interpersonal skills pertinent to managing other personnel and/or leading projects and initiatives (demonstrated by feedback, team/project success and/or references).
Eisai - 2 years ago
copy to clipboard
Eisai Inc. develops and markets pharmaceuticals to treat a variety of ills. As the US production arm of Eisai Co., its roster includes...