Senior Director, Intellectual Property

Overview

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DMT is seeking an experienced intellectual property attorney, with a focus in patent prosecution, to manage 4

DMT’s intellectual property portfolio and provide strategic counsel and training on all facets of patent, trade secret, trademark, and copyright law, including procurement, registration, enforcement, freedom to operate, and IP litigation. The role will also counsel 4

DMT’s R&D and CMC teams on a wide range of day-to-day transactions with partners that are central to their work, and provide IP input on strategic transactions and support IP diligence efforts. The role will work cross-functionally with R&D, CMC, Finance, Business Development, and IT teams, and may interact with other teams, depending on project needs. The role will report to and be a strategic thought partner to the Chief Legal Officer.

The ideal candidate must be an experienced attorney, with a strong background in the biopharmaceutical industry and excellent business judgment and interpersonal skills. In depth knowledge of the drug development process, regulatory and compliance requirements, strategic partnerships, and commercial strategy is strongly preferred.

Education

• J.D. degree or equivalent from an accredited law school
• Ph.D. in molecular biology, genetics, biochemistry, or other biological field related to the biopharma industry
• Admission to at least one U.S. state bar
• Registered to practice before the United States Patent and Trademark Office

• Collaborate with Chief Legal Officer on development of 4
  
  DMT’s intellectual property strategy.
• Responsible for implementing key elements of 4
  
  DMT’s intellectual property strategy, and manages its patent, trade secret, and trademark portfolio; implements a strategy for IP lifecycle management.
• Directs outside counsel in the preparation and prosecution of applications and responding to office actions; directs outside counsel in evaluating the patentability of invention submissions and registrability of trademarks globally; manages related outside counsel budgets.
• Identifies strategic areas for patenting, trade secret protection, and trademarking; collaborates with R&D, CMC, Clinical Science, and other functions to proactively identify and develop patentable intellectual property to prepare, file, and prosecute.
• Manages patentability, freedom-to-operate, infringement, validity, and regulatory exclusivity analyses.
• Identifies and tracks 4
  
  DMT trade secrets and provides counsel with respect to 4
  
  DMT’s trade secret protection practices.
• Provides IP perspective and counseling at 4
  
  DMT meetings and presents on IP topics.
• Counsels and trains internal clients on intellectual property practices and policies.
• Conducts IP due diligence for business development activities and supports IP due diligence related to financing activities.
• Drafts, reviews, and negotiates agreements to support R&D and CMC activities, including NDAs, MTAs, MSAs, sponsored research agreements, consulting agreements, and licenses.
• Collaborates with Legal colleagues, Business Development, and other key leaders and functions on key strategic agreements, including licenses, collaboration agreements, and other business development efforts.
• Assists with other Legal Department matters, including litigation support, SEC reporting (IP-related sections), records management, compliance activities, and template projects.
• Other duties as assigned, nothing in this job description restricts management’s right to assign or reassign duties and responsibilities to this job at any time.

Required:

• 10+ years of patent prosecution experience as an attorney in the life sciences field, particularly in biopharma (can be a combination of law firm and in-house experience).
• Strong knowledge of patent, trade secret, and trademark practices, as well as current U.S. and foreign patent, trade secret, and trademark laws
• In-house experience in and knowledge of drug development, with expertise in genetic medicines strongly preferred; in-house experience at one or more publicly traded, commercial-stage biotechnology, pharmaceutical, or biopharmaceutical companies.
• Experience managing outside IP counsel and non-attorney…