Patent Counsel

Essential Functions:

IP Strategy Development & Portfolio Management: Develop and implement comprehensive global IP strategies supporting pipeline and marketed products; Build, manage, and optimize a high-value patent portfolio aligned with R&D and commercialization priorities; Advise on lifecycle management strategies; Identify opportunities to strengthen competitive positioning.
Patent Prosecution & Counseling: Prepare, file, and prosecute patent applications in the US and in other jurisdictions with foreign associates; Provide strategic advice on claim scope, patentability, and jurisdictional considerations; Conduct invention disclosure sessions with scientists to identify patentable innovations: Ensure consistency and quality in prosecution strategy across jurisdictions.
Freedom-to-Operate (FTO) & Risk Assessment: Lead FTO analyses to assess potential infringement risks for development candidates and commercial products; Provide clear, actionable guidance on IP risks and mitigation strategies; Monitor competitor IP landscapes and emerging technologies to inform business decisions; Support due diligence activities for licensing, partnerships, and M&A transactions.

Additional Responsibilities:

Keep current with developing patent law
Assess in-licensing opportunities/associated due diligence activities
Provide periodic litigation support
Assist in training on various IP related topics

Qualifications
Education:

Juris Doctor ABA accredited law school – Required
Bachelor’s Degree (BA/BS) Undergraduate degree in chemistry, chemical engineering or pharmaceutical sciences, pharmacy – Required

Experience:

5 years or more in Experience in a law firm/pharmaceutical company legal department advising pharmaceutical clients

Specialized Knowledge:

Drafting and Prosecuting Patent applications in the US and foreign jurisdictions
Ability to manage multiple projects and provide timely advice to R&D and senior management

Licenses:

License to practice before the United States Patent and Trademark Office.

License to practice law in one of the 50 states, preferably NJ.