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Director, IP Corporate Counsel

Company: Healthcare Businesswomen's Association
Location: Princeton
Posted on: April 9, 2021

Job Description:

Director, IP Corporate Counsel (Digital) Job Summary:The Otsuka US Legal Team is looking for an experienced Intellectual Property attorney who can be successful within our ethical, fast-paced, adaptive and collaborative culture. This position is located in either Princeton, NJ or Rockville, MD.The Director, IP Corporate Counsel will bring an advanced understanding of digital therapeutics, the pharmaceutical industry and the intellectual property framework of digital products and the industry. Having several years of applicable experience, the incumbent will manage all aspects of intellectual property estates in Otsuka's core and developmental therapeutic areas, such as digital health, digital therapeutics, and medical devices, including bioinformatics, medical systems, databases, data search and retrieval, and mobile applications. They will develop, implement and execute IP and legal strategies for their functional area that provide a solid legal position while enabling the business objectives. As a Director within the Legal team, it is expected the incumbent will provide clear and appropriate advice to clients, will work independently and will know when to appropriately escalate complex and unique topics for confirmation of their own well-reasoned positions.The Director, IP Corporate Counsel will report to the Senior Director, IP Corporate Counsel in the Intellectual Property Practice Group in Legal Affairs. Key responsibilities will be to identify and pursue strategies to capture innovation especially in digital health and medical device areas, including communicating IP guidance and risks to IP, legal and business teams. The attorney in this role will develop and execute far-sighted IP strategy for projects and portfolios worldwide in line with company business goals, and may also work on business development deals.Job DescriptionDirector, IP Corporate Counsel Specific Responsibilities:

  • Create and implement global strategic approaches toward building patent portfolios and providing value to business
  • Prepare and prosecute patent applications in the US and abroad, including effectively managing outside counsel as needed
  • Manage IP litigation work by outside counsel in the US and abroad
  • Provide IP and technical analysis in support of patent litigations
  • Manage all aspects of intellectual property estates in Otsuka's core and developmental therapeutic areas, such as digital health, digital therapeutics, and medical devices, including bioinformatics, medical systems, databases, data search and retrieval, and mobile applications
  • Research, evaluate and monitor patent portfolios of third parties, and develop FTO strategy
  • Develop and communicate IP guidance to stakeholders across the business, including within Clinical, Medical Affairs, Business Development, Commercial, Marketing, and Legal Affairs
  • Support intellectual property-related transactional work
  • Develop an understanding of Otsuka's technology, scientific and business strategy to develop and prioritize IP strategies and to identify IP-related risks; advise company management and stakeholders on IP strategies and risks
  • Perform other legal, administrative and corporate duties upon request
  • Work collaboratively and strategically with members of IP department in related companies
  • Review and negotiate contracts for collaboration with third parties regarding IP mattersAdditional Director Responsibilities (Representative not exhaustive list)
    • Solutions Analysis: Analyze specific problems and issues to find the best solutions. Solutions could be technical or professional in nature.
    • Internal Client Relationship Management: Contribute to the management of partnering relationships with internal clients, building effective working relationships and providing high-quality professional services to support in delivering business strategy and plans.
    • Recommendations: Advise others on how to design new processes and systems that meet professional standards.
    • Information and Business Advice: Resolve queries from internal or external customers or suppliers by providing information on complex processes and the related policies, referring to others where necessary for interpretation of policy.
    • Risk Scenario Modeling: Analyze, assess, and quantify the risks associated with products/individual applications/business activities/the market to determine whether any risk is within the agreed risk appetite. Undertake tactical risk modeling.QualificationsRequiredBEHAVIORAL COMPETENCIES
      • Decision Quality:Makes good and timely decisions that keep the organization moving forward.
        --
      • Communicates Effectively:Develops and delivers multi-mode communications that convey a clear understanding of the unique needs of different audiences.
        --
      • Collaborates:Builds partnerships and works collaboratively with others to meet shared objectives.
        --
      • Develops Talent:Develops people to meet both their career goals and the organization's goals.
        --
      • Strategic Mindset:Sees ahead to future possibilities and translates them into breakthrough strategies.
        --
      • Business Insight:Applies knowledge of business and the marketplace to advance the organization's goals. Monitors business news and market changes for impact on the business or on own expertise area; uses this to shape decisions.TECHNICAL COMPETENCIES
        • Questions Strategically:Works without supervision and provides technical guidance when required to uncover clients' explicit needs and/or unforeseen opportunities and challenges..
          --
        • Negotiation:Uses comprehensive knowledge and skills to negotiate independently while providing guidance and training to others
          --
        • Analyze Alternatives and Recommend Solutions:Works with full competence to analyze potential solutions and create recommendations based on the expected benefits, costs, and overall value of the solution for key stakeholders.
          --
        • Effectively Presents Solutions:Uses comprehensive knowledge and skills to act independently while guiding and training others to clearly present solutions that link directly to the key objectives and challenges important to the client.EDUCATION:
          • Doctor of Jurisprudence (J.D.) or equivalent degree required
          • Licensed US Attorney, USPTO Registration Number required
          • Advanced degree preferred in the life sciences, clinical sciences, bioinformatics engineering; or related disciplineEXPERIENCE:
            • Minimum of 5 years of relevant experience required, with minimum of 3 years as an in-house patent attorney strongly preferred
            • Experience in the biotech and/or pharmaceutical industry preferred
            • Minimum of 3 years relevant experience with technology and/or life science industry in IP portfolio development, including preparing patents for electrical engineering, software, mobile computer systems, database architectures, data science, and artificial intelligence and machine learning, preferably in the context of clinical medicine, medical devices, and/or digital health required
            • Experience with global patent prosecution required.
            • First-hand experience of patent drafting and patent prosecution required
            • Experience with re-examination, inter partes reviews proceedings, and litigation preferredUp to 25% travel is required based upon business needs. Come discover more about Otsuka and our benefit offerings; https://www.otsuka-us.com/careers-join-otsuka . Disclaimer:-- This job description is intended to describe the general nature and level of the work being performed by the people assigned to this position. It is not intended to include every job duty and responsibility specific to the position. Otsuka reserves the right to amend and change responsibilities to meet business and organizational needs as necessary. Otsuka is an equal opportunity employer. All qualified applicants are encouraged to apply and will receive consideration for employment without regard to their protected veteran or disabled status, or any protected status. Statement Regarding Job Recruiting Fraud Scams Job postings, job offers, or introductions to enter into a business relationship with Otsuka through a third-party vendor may be unauthorized. Avoid being the subject of a scam by dealing only directly with Otsuka through its official Otsuka Career website https://vhr-otsuka.wd1.myworkdayjobs.com/en-US/External . Any authorized third-party vendor job boards should redirect any inquiry to this Otsuka Career website. The HBA's purpose is to further the advancement and impact of women in the business of healthcare US office:
              373 Route 46 West Bldg E, Suite 215 Fairfield, NJ 07004
              Phone: +1 (973) 575-0606 Fax: +1 (703)-852-4414 Email: info@hbanet.org

Keywords: Healthcare Businesswomen's Association, Trenton , Director, IP Corporate Counsel, Executive , Princeton, New Jersey

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