Patent Counsel/Agent, Small Molecule

South San Francisco
California, United States of America

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The Position

The Patent Counsel will help build the company`s small molecule global intellectual property portfolio through strategic planning and execution of patent preparation and prosecution. Partnering with clients across multiple functional areas, the Patent Counsel will build, maintain and defend the Company`s intellectual property interests. The Patent Counsel will develop in-depth expertise in particular areas of medicinal chemistry and provide guidance on patent law issues to business groups and scientists conducting research in those areas. The ideal candidate will prove him/herself integral and invaluable to the business, as it continues to discover and explore innovative medicines and technologies to help patients.

Key Responsibilities Include:

Provide Advice & Counsel:

  • Provide clear, informed and sophisticated counseling to clients within Research & Early Development (gRED), Product Development (PD), Manufacturing (PT), Business Development and other functional areas through all phases of patient-focused drug research, development, and commercialization
  • Develop in-depth expertise in particular areas of small molecule drug discovery in order to provide guidance on patent law issues to business groups and scientists conducting research in those areas
  • Render legal opinions with respect to patentability, validity, and freedom to operate

Manage Docket (prep, prosecute, conduct due diligence):

  • Maintain a substantial and active prosecution docket of U.S. and foreign patent applications, with interference, reexamination, post-exam, and opposition practices as they may arise with prosecution
  • Prepare, file and prosecute patent applications, with a primary focus on the protection of inventions and patent prosecution relating to small molecule therapeutics
  • Conduct due diligence (including freedom-to-operate, infringement and validity analyses)

Collaborate, Manage, & Support Others:

  • Provide agreement support (including MTAs, CDAs, research collaborations, and licensing agreements)
  • Support intellectual property-related transactional and litigation work
  • At times, manage external relationships with outside counsel and collaborators, and interactions with global affiliates


Ideal Experience/Education:

  • 5+ years of patent agent/counsel experience in active small molecule patent prosecution; 50% or more in patent application drafting and prosecution in a pharma or biotech therapeutics corporate setting and/or representing such clients in a law firm
  • Admission to practice before the U.S. Patent and Trademark Office (USPTO)
  • An advanced degree in organic or medicinal chemistry is required; Ph.D. preferred
  • A United States law degree (JD) is preferred
  • Agreement and transactional experience is desired

Critical Competencies:
Strategic Small Molecule Patent Expert:
 In a high stakes and dynamic patent environment, you will inspire confidence by:

  • Counseling clients on complex legal issues and potential implications to current or future strategies and molecule/medicine development
  • Prosecuting active and complex patent portfolios with respect to therapeutics in development or being commercialized
  • Demonstrating strong knowledge of domestic and international laws, regulations, and processes relating to patents

Collaborative Communicator: Within a complex and matrix company, you will advise on complex patent proceedings by:

  • Demonstrating excellent judgment, negotiation and communication (verbal and written) skills; able to simplify the complex and adapt to audiences with varying levels of legal fluency
  • Engaging and influencing business leaders without direct ownership
  • Collaborating with legal and business leadership, with the presumption that views will be well-formed, pragmatic and communicated in a very professional manner

Adaptive and Results-Oriented Performer: In an innovative and fast-paced environment, you will have delivered by:

  • Balancing competing priorities and managing an active patent portfolio; multitasking with ease
  • Working effectively both in a team and independently; at times, may manage external relationships with outside counsel and collaborators, and interactions with global affiliates

Who We Are

A member of the Roche Group, Genentech has been at the forefront of the biotechnology industry for more than 40 years, using human genetic information to develop novel medicines for serious and life-threatening diseases. Genentech has multiple therapies on the market for cancer & other serious illnesses. Please take this opportunity to learn about Genentech where we believe that our employees are our most important asset & are dedicated to remaining a great place to work.

The next step is yours. To apply today, click on the "Apply online" button.

Genentech is an equal opportunity employer & prohibits unlawful discrimination based on race, color, religion, gender, sexual orientation, gender identity/expression, national origin/ancestry, age, disability, marital & veteran status. For more information about equal employment opportunity, visit our Genentech Careers page.

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