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Intellectual Property/Patent Attorney

Role overview

Qualifications

  • 7+ years of experience in patent prosecution and counseling in a corporate setting and/or law firm
  • Registered US patent agent or attorney qualification required; must be a member in good standing of at least one state bar
  • Advanced Degree or equivalent experience in Molecular Biology, Biology, Biochemistry, or Chemistry
  • Experience in patenting nucleic acid detection methods and nucleic acid chemistry

Responsibilities

  • Provide clear and informed counseling to stakeholders engaged in research development, manufacturing, business development, and commercialization activities
  • Render legal opinions with respect to patentability, validity, and freedom-to-operate
  • Manage and expand a substantial worldwide patent portfolio and perform patent prosecution work directly and/or in collaboration with outside counsel
  • Align the patent portfolio with short- and long-term business needs and identify patenting opportunities

Key facts

  • Remote from: United States
  • Full time
  • Senior (5-10 years)
  • Lawyer
  • English

Hard skills

Other skills

  • Communication
  • Collaboration

About the company

Roche logo

Roche

Biotechnology

Roche is a global pioneer in pharmaceuticals and diagnostics focused on advancing science to improve people’s lives. The combined strengths of pharmaceuticals and diagnostics under one roof have made Roche the leader in personalised healthcare – a strategy that aims to fit the right treatment to each patient in the best way possible.Roche is the world’s largest biotech company, with truly differentiated medicines in oncology, immunology, infectious diseases, ophthalmology and diseases of the central nervous system. Roche is also the world leader in in vitro diagnostics and tissue-based cancer diagnostics, and a frontrunner in diabetes management.Founded in 1896, Roche continues to search for better ways to prevent, diagnose and treat diseases and make a sustainable contribution to society. The company also aims to improve patient access to medical innovations by working with all relevant stakeholders. Thirty medicines developed by Roche are included in the World Health Organization Model Lists of Essential Medicines, among them life-saving antibiotics, antimalarials and cancer medicines. Roche has been recognised as the Group Leader in sustainability within the Pharmaceuticals, Biotechnology & Life Sciences Industry ten years in a row by the Dow Jones Sustainability Indices (DJSI).For more information, please visit https://careers.roche.comRead our community guidelines here: https://www.roche.com/some-guidelines.htm#Roche #Biotechnology #Pharmaceuticals #Diagnostics #Healthcare #PersonalisedHealthcare #GreatPlaceToWork #Innovation

Company details

Company typeXLarge
IndustryBiotechnology
Company size10001

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Job description

At Roche you can show up as yourself, embraced for the unique qualities you bring. Our culture encourages personal expression, open dialogue, and genuine connections,  where you are valued, accepted and respected for who you are, allowing you to thrive both personally and professionally. This is how we aim to prevent, stop and cure diseases and ensure everyone has access to healthcare today and for generations to come. Join Roche, where every voice matters.

The Position

As a patent professional at Roche Diagnostics, you will be in charge of handling the intellectual property aspects of technologies making an impact on patients’ everyday lives.

As a valued team member you will help bring new diagnostic testing capabilities to market by serving as a functional lead on teams that are working to create, develop and improve molecular diagnostic assays and testing platforms, as well as nucleic acid sequencing technologies and systems.  In this role, you will manage and expand a patent portfolio and ensure freedom-to-operate for diagnostic assays and sequencing technologies and the corresponding workflows implemented on automated systems.  

The Opportunity

Provide clear and informed counseling to stakeholders engaged in research & development, manufacturing, business development/partnering, portfolio and lifecycle management, and commercialization activities.

  • Render legal opinions with respect to patentability, validity, and freedom-to-operate in connection with product development efforts

  • Be responsible for a substantial worldwide patent portfolio and perform patent prosecution work directly and/or in collaboration with outside counsel

  • Align the patent portfolio with short- and long-term business needs and priorities by identifying and capturing patenting opportunities that arise in connection with company R&D efforts

  • Apply knowledge of patent trends and case law developments, in combination with technical understanding, to devise patent strategies and advise stakeholders accordingly

  • Assist with and/or conduct due diligence assessments and provide counseling based on these assessments (including freedom-to-operate, infringement and validity analyses), evaluate associated risks, and develop risk mitigation strategies

  • Support a variety of intellectual property-related contracts and relationships with third parties (such as MTAs, CDAs, research collaborations, licensing agreements, acquisition and litigation activities, and marketing efforts) through collaborations with transactional attorneys and licensing colleagues

  • Deliver results on-time, on-target and within-budget according to team goals

Who You Are

  • 7+ years of experience in patent prosecution and counseling in a corporate setting and/or law firm

  • Registered US patent agent or attorney qualification required; for attorney applicants, you must be a member in good standing of at least one state bar

  • Advanced Degree or equivalent experience in Molecular Biology, Biology, Biochemistry, or Chemistry

  • Experience in patenting nucleic acid detection methods and nucleic acid chemistry, and preferably, next-generation nucleic acid sequencing methods and reagents, protein engineering

  • Contract and transactional experience is desirable, but not required

  • Some travel required

Important Stakeholders/ Interactions

  • Assays & Reagents IP Subteam Lead, Molecular Customer Area

  • Systems IP Subteam Lead, Molecular Customer Area

  • Head of IP, Molecular Customer Area

  • Head of IP, Pathology Customer Area

  • Head of IP, Roche Diagnostics

  • Business and Project Teams

  • Members of Research & Development across Roche Diagnostics

  • Members of the Molecular IP team and of local and global supporting functionsacross the Roche Diagnostics IP Group

  • Patent and Trademark Office

Position based in Pleasanton, CA or Santa Clara, CA; fully remote position is not possible

Relocation benefits are not available for this position.

The expected salary range for this position based on the primary location of California is $186,800 to $346,800. Actual pay will be determined based on experience, qualifications, geographic location, and other job-related factors permitted by law.  A discretionary annual bonus may be available based on individual and Company performance.  This position also qualifies for the benefits detailed at the link provided below.

Benefits

Who we are

A healthier future drives us to innovate. Together, more than 100’000 employees across the globe are dedicated to advance science, ensuring everyone has access to healthcare today and for generations to come. Our efforts result in more than 26 million people treated with our medicines and over 30 billion tests conducted using our Diagnostics products. We empower each other to explore new possibilities, foster creativity, and keep our ambitions high, so we can deliver life-changing healthcare solutions that make a global impact.


Let’s build a healthier future, together.

Roche is an equal opportunity employer. It is our policy and practice to employ, promote, and otherwise treat any and all employees and applicants on the basis of merit, qualifications, and competence. The company's policy prohibits unlawful discrimination, including but not limited to, discrimination on the basis of Protected Veteran status, individuals with disabilities status, and consistent with all federal, state, or local laws.

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