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Chief US Counsel, Intellectual Property at Bracco

Bracco

Full-Time

Independence, KS 67301, USA

Not defined

26 Dec → 25 Jan

Expired

Job Description

The Chief US Counsel, Intellectual Property (shortly referred to as US IP Counsel), will be a key member of the Corporate Intellectual Property Department. By possessing substantial knowledge and experience in a variety of intellectual property facets with primary focus on US patent law, he/she will be responsible for assisting the Department’s efforts on all aspects of Bracco Group’s intellectual property portfolio, including patents and trade secrets.

He/She will be engaged in activities and tasks for projects and initiatives promoted within the entire Bracco Group, either related to the best protection and valuation of internal assets, as well as to the best strategies and practices in negotiation with third parties or litigation matters.

US IP Counsel will be responsible for assisting with worldwide prosecution and particularly with U.S., PCT and European patent prosecution forms, as well as docketing pertinent information for the worldwide portfolio. He/She will also liaise as needed with each business units and functions, either at BDI or within the Bracco Group.

Who We Are?

Bracco is an international Group active in the healthcare sector and a leader in diagnostic imaging. The Group’s main products are contrast agents sold in over 100 countries, both directly and indirectly through branches, joint ventures and license and distribution agreements.

Bracco Diagnostics Inc. is a subsidiary of Bracco Imaging which is part of the overall Bracco Group. The Company specializes in the clinical development, marketing, and sales of diagnostic contrast imaging agents. Bracco Diagnostics Inc. primarily markets its products to hospitals throughout the United States. Bracco Diagnostics Inc. is committed to the discovery, development, manufacturing, and marketing of imaging agents and solutions aimed at providing better use and management in terms of diagnostic efficacy, patient safety, and cost-effectiveness.

About the Role

Essential duties and responsibilities include the following:
• Serve as trusted counsel on intellectual property issues by giving solid and practical legal advice with the primary focus on US practice.
• Promote strategic development and maintenance of the patent portfolio worldwide, including drafting and prosecuting patent applications and/or by overseeing outside prosecution counsel.
• Provide strategic counseling, and work with outside counsel, on all facets of intellectual property law, including policies and practices, patent assessments (e.g. patentability, freedom to operate, validity, enforcement), inventorship, and business development transactions.
• Assist with drafting, reviewing and negotiating the intellectual property provisions of research and development, collaboration, confidentiality, material transfer and license agreements and of other contractual documents (e.g. manufacturing, packaging, pharmaceutical development, supply, and master service agreements).
• Provide strategic counseling and experienced support with intellectual property litigation as needed.
• Assist with the development and implementation of business unit IP strategies and processes.
• Conduct and/or coordinate IP related due diligence in connection with a range of strategic transactions.
• Manage invention disclosures and portfolios, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and invention review team meetings.
• Review presentations, scientific publications and marketing materials for IP compliance.

US IP Counsel will work closely with clients in various functions in a dynamic, growth-oriented environment and will collaborate with other in-house and outside attorneys to accomplish Bracco Group’s objectives.

Core Competencies
• Ability to work well independently with minimal supervision, balanced with the ability to work well in a team environment;
• Attention to detail;
• Excellent oral and written and communications skills;
• Working knowledge of the main Microsoft Office software programs.

Education and Experience Required
• Registered to practice before the USPTO.
• J.D. degree or equivalent and admission to at least one state bar.
• Bachelor’s degree or equivalent in the pharmaceutical sciences sector, preferably chemistry or biochemistry; an advanced degree and/or scientific research experience is preferred.
• Excellent analytical, written and verbal communication skills.
• Highest integrity, excellent judgment and the ability to proactively recognize and effectively assess business opportunities and risks and communicate legal issues to patent, legal and general management.
• 10 or more years of patent law experience in the pharmaceutical field, or an equivalent combination of patent law and pharmaceutical industry experience.
• Ability to work as part of cross-functional teams and drive results.
• Experience serving as a counselor to leadership teams with a proven ability to deliver and develop robust IP strategies in a proactive, objective and commercially oriented manner.
• The successful candidate will have had experience preparing and prosecuting domestic and international patent applications in the pharmaceutical/biotech industry and providing patentability, validity, and infringement assessments, within a corporation, law firm or federal agency.
• Working knowledge of patent law in major jurisdictions outside of the US.

Your application

If you meet this unique opportunity's requirements and would like to join in an international environment working for better patients’ life, we encourage you to apply now.

At Bracco, we believe in the value of diversity and inclusion.

We respect and celebrate the diversity of our people, their backgrounds and experiences, and provide equal opportunity for all.

We are Bracco. Join us.

Job Responsibilities

  • By possessing substantial knowledge and experience in a variety of intellectual property facets with primary focus on US patent law, he/she will be responsible for assisting the Department’s efforts on all aspects of Bracco Group’s intellectual property portfolio, including patents and trade secrets
  • He/She will be engaged in activities and tasks for projects and initiatives promoted within the entire Bracco Group, either related to the best protection and valuation of internal assets, as well as to the best strategies and practices in negotiation with third parties or litigation matters
  • US IP Counsel will be responsible for assisting with worldwide prosecution and particularly with U.S., PCT and European patent prosecution forms, as well as docketing pertinent information for the worldwide portfolio
  • He/She will also liaise as needed with each business units and functions, either at BDI or within the Bracco Group
  • Serve as trusted counsel on intellectual property issues by giving solid and practical legal advice with the primary focus on US practice
  • Promote strategic development and maintenance of the patent portfolio worldwide, including drafting and prosecuting patent applications and/or by overseeing outside prosecution counsel
  • Provide strategic counseling, and work with outside counsel, on all facets of intellectual property law, including policies and practices, patent assessments (e.g. patentability, freedom to operate, validity, enforcement), inventorship, and business development transactions
  • Assist with drafting, reviewing and negotiating the intellectual property provisions of research and development, collaboration, confidentiality, material transfer and license agreements and of other contractual documents (e.g. manufacturing, packaging, pharmaceutical development, supply, and master service agreements)
  • Provide strategic counseling and experienced support with intellectual property litigation as needed
  • Assist with the development and implementation of business unit IP strategies and processes
  • Conduct and/or coordinate IP related due diligence in connection with a range of strategic transactions
  • Manage invention disclosures and portfolios, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and invention review team meetings
  • Review presentations, scientific publications and marketing materials for IP compliance
  • US IP Counsel will work closely with clients in various functions in a dynamic, growth-oriented environment and will collaborate with other in-house and outside attorneys to accomplish Bracco Group’s objectives

Requirements / Qualifications

  • Ability to work well independently with minimal supervision, balanced with the ability to work well in a team environment;

  • Attention to detail;

  • Working knowledge of the main Microsoft Office software programs

  • Education and Experience Required

  • Registered to practice before the USPTO

  • J.D. degree or equivalent and admission to at least one state bar

  • Excellent analytical, written and verbal communication skills

  • Highest integrity, excellent judgment and the ability to proactively recognize and effectively assess business opportunities and risks and communicate legal issues to patent, legal and general management

  • 10 or more years of patent law experience in the pharmaceutical field, or an equivalent combination of patent law and pharmaceutical industry experience

  • Ability to work as part of cross-functional teams and drive results

  • Experience serving as a counselor to leadership teams with a proven ability to deliver and develop robust IP strategies in a proactive, objective and commercially oriented manner

  • The successful candidate will have had experience preparing and prosecuting domestic and international patent applications in the pharmaceutical/biotech industry and providing patentability, validity, and infringement assessments, within a corporation, law firm or federal agency

  • Working knowledge of patent law in major jurisdictions outside of the US

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