Patent Counsel

SUMMARY

Generation Bio seeks an experienced Patent Counsel to help Generation Bio’s IP team to develop and implement IP strategies, manage the patent portfolio, patent prosecution and enforcement, publication review, due diligence, support on trademark and copyright matters, support on transactional and contract matters involving IP, and drafting freedom to operate opinions and other portfolio position opinions.

The successful candidate will possess experience in managing worldwide patent portfolios and pursuing protection and defense of IP assets over the full course of therapeutic development.  This position will report to the Vice President, Head of Intellectual Property.

RESPONSIBILITIES:

• Prepare, file and prosecute U.S., and foreign patent applications in the fields of genetic medicine and organic chemistry.
• Work closely with the research and development team to identify, evaluate, and file patent applications on new inventions, conduct prior art searches and IP landscape studies, manage new and existing patent portfolios.
• Identify and manage the company’s trade secrets.
• Proactively develop global intellectual property strategies for Generation Bio’s platform technologies in collaboration with business and scientific teams to ensure long-term competitive advantage.
• Provide company scientists counseling on various legal issues including confidentiality and intellectual property.
• Perform diligence with respect to patentability, validity, and freedom-to-operate.
• Provide IP support for business development deals and partnership formation.
• Support the company’s transactional team in drafting IP related agreements.
• Review and oversee patent drafting and prosecution by outside counsel.
• Manage outside counsel to maintain patent prosecution docket and rigorously implement IP strategies for US and foreign patent portfolios.
• Strengthen and extend the company’s IP position.

QUALIFICATIONS:

• JD. and bar admission in good standing in at least one state.
• Registered to practice before the U.S. Patent and Trademark Office.
• Advanced degree in organic chemistry, molecular biology, biochemistry, genetics or any other related fields.
• Minimum of 6 years of experience post J.D., in a law firm and/or in-house pharmaceutical or biotechnology company practicing patent law, including management of complex global IP portfolios.
• Excellent communication, negotiation, collaboration and interpersonal skills.
• Client service focus and ability to adapt and prioritize.

POSITION: Full-Time, Exempt