Join the World's Top Legal Talent Network

The Position

Position Scope:

Genentech’s Intellectual Property team is seeking a senior level patent counsel/agent whose passion lies in creating and leveraging groundbreaking IP strategies that enable Genentech to  “do now what patients need next.”  As a key partner and business strategist, this individual will push the boundaries of what is possible in a highly competitive industry. This role reports directly to the Director and Assistant General Counsel, Pharma Technical IP Lead in the Genentech Legal Department and is based at our South San Francisco campus.

A hybrid working schedule of 3 days per week onsite is required. This position is not suitable for a fully remote working arrangement. Relocation benefits are not available for this posting.

Key Responsibilities:

Key responsibilities of this individual contributor role will include but not be limited to the following:

Providing Advice & Counsel:

• Providing clear, informed and sophisticated counseling to stakeholders, including leaders, within the Pharma Technical (PT) organization (Manufacturing) and Research & Early Development (gRED) focused on our expanding cell therapy and device/drug delivery portfolios and related technologies, along with Product Development (PD), Pharma Partnering and other functional areas through all phases of patient-focused drug research, development, and commercialization

•  Developing in-depth expertise in particular areas of cell therapy and other new modalities, including related manufacturing technologies, large molecule drug discovery and development while providing guidance on patent law issues to scientists conducting research and other business stakeholders

• Rendering legal opinions and providing guidance concerning issues of patentability, validity, and freedom-to-operate

• Conducting due diligence investigations and analyses of in-house and partnered programs (including freedom-to-operate, infringement and validity analyses)

• Maintaining strong knowledge of legal case law, rules and regulations before the U.S. Patent & Trademark Office as well as other jurisdictional IP offices

Managing Docket (patent preparation and prosecution):

• Prepare, file and prosecute patent applications with a primary focus on the protection of inventions and patent prosecution relating to cell therapies, large molecule therapeutics, and related manufacturing technologies, from “cradle to grave” and at diverse development stages, as well as matrixed support to other IP practice areas

• Manage and prosecute a substantial and active global docket, including handling U.S. and foreign patent applications as well as post-grant proceedings (e.g., reexamination, reissue, post-grant review), including foreign oppositions and appeals, as they may arise

• Balance competing priorities

Collaborating, Managing, & Supporting Teams:

• Provide IP support for partnering and other agreements (e.g., major licensing agreements, research collaborations, MTAs, CDAs)

• Support intellectual property-related transactional and litigation work

• At times, direct and manage outside counsel, including overseeing budget as appropriate

• Collaborate with colleagues around the globe on IP matters and as part of cross-functional teams

•  Engage in clear communication, both oral and written, to all levels of the organization with a willingness to listen and learn from others

• Influence business leaders as a trusted advisor and thought partner

Qualifications:

• 7+ years of patent attorney/agent experience in life sciences patent prosecution, with majority of experience in patent application drafting and prosecution in a pharma/biotech corporate setting and/or representing such clients/matters in a law firm

• Admission to practice before the U.S. Patent and Trademark Office (USPTO) required

• A United States law degree (J.D.) and a current “good standing” admission to at least one US state bar is required for attorney applicants

• A degree in a biological science is required, with ideally an advanced or dual degree in engineering (mechanical or electrical) or physics

• Medical device experience a plus

• Agreement and transactional experience is a plus

• Experience with adverse proceedings (e.g., USPTO adverse proceedings, EPO adverse proceedings, U.S. litigation) is a plus

The expected salary range for this position based on the primary location of California is $207,600 - $385,600 (patent counsel) or $180,300 - $334,900 (patent agent).  Actual pay will be determined based on experience, qualifications, geographic location, and other job-related factors permitted by law.  A discretionary annual bonus may be available based on individual and Company performance.  This position also qualifies for the benefits detailed at the link provided below.

Genentech is an equal opportunity employer, and we embrace the increasingly diverse world around us. Genentech prohibits unlawful discrimination based on race, color, religion, gender, sexual orientation, gender identity or expression, national origin or ancestry, age, disability, marital status and veteran status.