Job Description

Title: Senior IP Counsel

Department: Legal

Reports to: Chief Financial and Strategy Officer

Effective Date: 2022/4/18

SUMMARY:

This senior counsel will lead our global IP management to develop the company’s IP strategy, manage the company’s patent portfolios and advise on IP related matters. Brii Bio has a pipeline of over 10 clinical-stage infectious disease or CNS programs across small molecules, biologics and siRNAs. You are expected to work closely with our research team to identify and protect new inventions of the company, establish relationships with external counsel and collaborators, and provide sophisticated advice to the senior management and other business team regarding IP issues.

DUTIES AND RESPONSIBILITIES:

Lead the IP team to develop and manage the company’s patent portfolios, trademarks, copyrights and trade secrets
Working with internal team and external counsels and agents to draft and prosecute patent applications in all jurisdictions, including responding to office actions
Support various business team on IP related matters, including invention spotting, publication reviews, freedom-to-operate analysis, IP due diligence analysis, risk assessment, licensing transactions, and other IP issues that arise in usual course of business
Develop and implement strategy and solutions to protect our intellectual property with appropriate consideration of business objectives and the risks, and make adjustments in accordance with trends and case law developments in major markets
Advise teams and senior management about patentability, exclusivity, freedom to operate, due diligence, contract, licensing, and litigation risks in a clear and concise manner
Provide support for potential IP litigation, IPRs, opposition proceedings, and other patent office proceedings
Educate and advise employees on IP matters
Provide support for regulatory filings and for post-approval IP management including creating and maintaining Orange Book listings and obtaining all available patent term adjustments
Enforce the company's IP rights when appropriate
Evaluate and monitor patent portfolios of relevant third parties
Build and maintain productive relationships with outside counsel and third-party collaborators

QUALIFICATIONS:

U.S. Law Degree (J.D.) from an accredited law school
Advanced degree in biology, biochemistry, chemistry or related field
Admitted to practice law in at least one U.S. state and in good standing in each state
Admitted to practice in front of the U.S. Patent and Trademark Office (USPTO bar admission) and in good standing
7+ years of experience practicing intellectual property law (law firm or in-house in the pharmaceutical or biotechnology industry), with 4+ years of practice drafting, filing and prosecuting pharmaceutical patent applications
Deep understanding of pharmaceutical patent laws, regulatory data protection laws, regulations, regulatory environment, and best practices in the U.S. and other major countries
Excellent writing, analytical and communication skills
Experience in IP due diligence activities for product or company acquisitions

Preferred Qualifications:

Experience drafting patent applications directed to small molecule therapeutics, processes, formulations and the like
Knowledge of small molecule pharmaceutical patent strategy including 505(b)(1) and 505(b)(2)
Prior in-house experience managing a complex patent portfolio for a pharmaceutical or biotechnology company
Combined in-house and law firm experience preferred
Ph.D. degree preferred. Master’s degree will be considered if candidates have extensive experience

COMPETENCIES:

Problem Solving -Identifies and resolves problems in a timely manner; Gathers and analyzes information skillfully; Develops alternative solutions; Works well in group problem solving situations; Reasons when dealing with emotional issues.
Strategic Thinking- Develops strategies to achieve organizational goals; Understands organization's strengths & weaknesses; Analyzes market and competition; Identifies external threats and opportunities; Adapts strategy to changing conditions.
Communication- Speaks clearly and persuasively in positive or negative situations; Listens and gets clarification; Responds well to questions; Demonstrates group presentation skills; Writes clearly and informatively; Edits work for spelling and grammar; Varies writing style to meet needs.
Leadership- Exhibits confidence in self and others; Inspires and motivates others to perform well; Effectively influences actions and opinions of others; Accepts feedback from others; Gives appropriate recognition to others.
Ethics- Treats people with respect; Keeps commitments; Inspires the trust of others; Works with integrity and ethically; Upholds organizational values.
Judgment- Displays willingness to make decisions; Exhibits sound and accurate judgment; Supports and explains reasoning for decisions; Includes appropriate people in decision-making process; Makes timely decisions.
Innovation- Displays original thinking and creativity; Meets challenges with resourcefulness; Generates suggestions for improving work; Develops innovative approaches and ideas; Presents ideas and information in a manner that gets others' attention.

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