Lead the intellectual property function of the company, including counselling management on IP matters, overseeing and reviewing preparation and prosecution of patent applications, IP risk assessment and management, reviewing IP-related provisions of corporate contracts, and staff IP education.
Intellectual property strategic guidance and counsel
- Propose and implement IP strategy in line with Company’s business strategy and to ensure Company dominant IP position for the long term
- Propose and manage in-licensing strategy to ensure Company dominant IP position for the long term
- Provide high level, independent support for due diligence, strategic collaborations, licensing agreements and other business contracting needs
- Provide opinion and recommendation to management on IP strategy and related activities
- Managing patents claims and filling strategy to unsure best strength, scope and position of patent portfolio to ensure long-term competitive advantage
- Oversee and review of patent preparation and prosecution to maximize value of portfolio
- Maintain positive relationships with external counsel and experts.
- Recommend and help implement IP strategies for R&D project teams
- Educate and advise senior management & scientists on important IP issues and advance IP/patent awareness.
Management and reporting of all intellectual property functions
- Manage all IP related function and team
- Build, manage and monitor IP functions and activities budget
- Contribute to Company Board reporting and take part of Board meeting
- Report and communicate internally IP activities on a regular basis
IP risk monitoring, litigation and associated strategy
- Manage and support outside counsel in IP disputes, litigation, IPRs, PGRs and oppositions, including formulating appropriate IP litigation strategies
- Develop a thorough understanding of DNA Script’s current and planned business activities, programs, competitors, and markets and keep abreast of developing legal trends, laws and regulations.
- Review publications, presentations, press releases and other materials for clearance.
- Conduct or supervise freedom-to-operate, non-infringement, and competitive landscape analyses in key technology areas and product development
Qualifications and experience
- JD, registered patent attorney
- 12+ years of relevant IP experience in the life-science industry, including significant in-house experience.
- An advanced degree in Molecular Biology, Bioengineering, Molecular Genetics, Synthetic Biology, Microbiology, or a related biotechnology-relevant discipline or an advanced degree in Organic Chemistry, Nucleic Acid Chemistry or related biochemistry-relevant discipline.
- Direct experience in biologic patents and life-science tool product and product development
- Experience in managing, organizing or taking part in IP committee or relevant processes
- Possess working knowledge of transactional, commercial, and intellectual property law
- Experience in Board reporting and Board meeting preparation and participation
- Can handle large volume of work on a prioritized basis
- Exceptional attention for detail and accuracy abilities.
- Strong interactive skills and collaborative attitude to work effectively in a team environment
- Excellent organizational, project management and problem-solving skills with the ability to ensure to stay in budget and time while communicating clearly to the rest of the management team.
- Highest levels of personal honesty, integrity and commitment.
- Experience in the field of DNA technology, such as DNA synthesis or DNA sequencing
- Start-up/small biotechnology company experience
- International experience with or for non-US firms
- Job located in South San Francisco (Bay area)
- Start date: ASAP