Counsel, Intellectual Property

New Yesterday

Sumitomo Pharma Co., Ltd. is a global pharmaceutical company based in Japan with key operations in the U.S. (Sumitomo Pharma America, Inc.), Canada (Sumitomo Pharma Canada, Inc.) and Europe (Sumitomo Pharma Switzerland GmbH) focused on addressing patient needs in oncology, urology, women's health, rare diseases, psychiatry & neurology, and cell & gene therapies. With several marketed products in the U.S., Canada, and Europe, and a diverse pipeline of early- to late-stage assets, we aim to accelerate discovery, research, and development to bring novel therapies to patients sooner. For more information on SMPA, visit our website https://www.us.sumitomo-pharma.com or follow us on LinkedIn.
Position We are currently seeking a dynamic and highly motivated individual to join the SMPA IP team as Counsel, Intellectual Property . The role will encompass all aspects of patent practice including patent prosecution, counseling, and transactional IP support, with an emphasis on patent litigation in the pharmaceutical/biotech industry. The successful candidate will be a partner and key business strategist with significant experience managing complex patent litigations (e.g., Hatch-Waxman ANDA) and other adversarial proceedings (e.g., IPR) in the pharmaceutical, biotechnology, or related life science industry. The position is fully remote, although periodic attendance may be required for U.S. in-house team meetings, and there may be some domestic and international business travel.
Job Duties and Responsibilities
Conduct due diligence, analyze IP litigation risks, and develop litigation strategies including enforcement and defense.
Collaborate with outside counsel regarding U.S. and foreign patent litigation to enable the development of creative strategies and drive deliverables to support business objectives.
Manage caseload of patent litigations, appeals, and other adversarial proceedings, while advising on substantive legal strategy with foresight and appropriate risk tolerance.
Work with internal teams to manage legal holds and oversee the gathering and preservation of documents for discovery.
Assist in identifying and preparing internal employees who may serve as witnesses during litigation.
Work effectively with cross-functional stakeholders to implement strategies and resolutions for disputes.
In collaboration with outside counsel, draft, prosecute and manage worldwide patent portfolios related to small molecules and biologicals.
Advise on all IP matters including FTO, patentability, inventorship, and portfolio exclusivity positions from patent and regulatory law considerations.
Provide transactional IP support by drafting and negotiating licensing agreements, clinical trial agreements, sponsored research agreements, material transfer agreements, contract research organization agreements, university licenses, CDAs, etc.
Review abstracts, manuscripts, posters, and other information intended for public disclosure for IP concerns.
Manage trademarks and domains, address copyright questions and issues.
Key Core Competencies
Sound judgment, independent thinking; acumen, drive and commitment to ethical conduct.
Ability to understand complex scenarios, identify relevant issues and risks, and propose solutions aligned with business objectives; communicate clearly to lawyers and non-lawyers.
Exceptional presentation and communication skills, both written and verbal, including the ability to explain complex legal issues simply.
Ability to work independently, be reliable, responsive and accountable.
Team player with strong collaboration; ability to organize, coordinate and motivate cross-functional teams.
Ability to effectively manage outside counsel and adhere to budgets.
Ability to handle multiple responsibilities and maintain high quality and timeliness under pressure; strong organizational skills.
Education and Experience
J.D. with 5+ years of patent litigation experience, including pre-trial and trial experience in U.S. District Courts.
Preferred experience in managing Hatch-Waxman litigation matters.
A scientific degree (undergraduate or graduate) with preference in biology, chemistry or biochemistry.
Must be currently admitted and in good standing to a State Bar or the District of Columbia Bar.
The role requires flexibility to have regular calls in the morning and/or evening with Japan colleagues, and also the ability to travel worldwide, as needed, in conjunction with managing and resolving disputes.
The base salary range for this role is $210,400 to $263,000. Base salary is part of our total rewards package which also includes the opportunity for merit-based salary increases, short incentive plan participation, eligibility for our 401(k) plan, medical, dental, vision, life and disability insurances and leaves provided in line with your work state. Our robust time-off policy includes flexible paid time off, 11 paid holidays plus additional time off for a shut-down period during the last week of December, 80 hours of paid sick time upon hire and each year thereafter. Total compensation, including base salary to be offered, will depend on elements unique to each candidate, including candidate experience, skills, education and other factors permitted by law.
Disclaimer: The above statements are intended to describe the general nature and level of work, and are not an exhaustive list of all responsibilities, duties, and skills required.
Confidential Data : All information (written, verbal, electronic, etc.) that an employee encounters is considered confidential.
Compliance : Achieve and maintain compliance with all applicable regulatory, legal and operational rules and procedures, ensuring that all plans and activities for and on behalf of Sumitomo Pharma America (SMPA) and affiliates are carried out with the highest ethical standards.
It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment.
Mental/Physical Requirements : Fast paced environment handling multiple demands. Must be able to exercise appropriate judgment as necessary. Requires a high level of initiative and independence. Excellent written and oral communication skills required. Requires ability to use a personal computer for extended periods of time.
Sumitomo Pharma America (SMPA) is an Equal Employment Opportunity (EEO) employer
Qualified applicants will receive consideration for employment without regard to race; color; creed; religion; national origin; age; ancestry; nationality; marital status; sex, gender; sexual orientation; disability; veteran or military status; or any other characteristic protected by law.
Sumitomo Pharma Co., Ltd. is a global pharmaceutical company with key operations in the U.S., Canada and Europe, focused on oncology, urology, women’s health, rare diseases, psychiatry & neurology, and cell & gene therapies. For more information, visit our website https://www.us.sumitomo-pharma.com or follow us on LinkedIn.
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Location:
Washington, DC, United States
Salary:
$200,000 - $250,000
Category:
Legal