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PATENT AND TRADEMARK COUNSEL

Job Field: Government Jobs
Location: United States, CA
Salary: $Not stated
JOB SUMMARY:
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<tr><td valign="top" width="450"><b>Job ID:00402575Job346of371Patent and Trademark CounselSouth San Francisco, CaliforniaJob factsJob functionLegalLocationUnited States - CaliforniaSouth San FranciscoCompany / DivisionPharmaceuticalsScheduleFull-timeJob typeRegular EmployeeJob levelExperiencedServiceDirect linkApply OnlinePrintWho We AreAt the Roche Group, about 80,000 people across 150 countries are pushing back the frontiers of healthcare. Working together, we''ve become one of the world''s leading research-focused healthcare groups. A member of the Roche Group, Genentech has been at the forefront of the biotechnology industry for more than 30 years, using human genetic information to develop novel medicines for serious and life-threatening diseases. The headquarters for Roche pharmaceutical operations in the United States, Genentech has multiple therapies on the market for cancer and other serious illnesses. Please take this opportunity to learn about Genentech, where we believe that our employees are our most important asset and are dedicated to remaining a great place to work.The PositionPatent and Trademark CounselPatent: Prepare, file and prosecute patent applications, with a primaryfocus on the protection of inventions and patent prosecution relating to largemolecule biologics. Maintain asubstantial and active prosecution docket of U.S. and foreign patentapplications, with interference, reexamination and opposition practices as theymay arise with prosecution. Develop in-depthexpertise in particular areas of biotherapeutic technology and provide guidanceon patent law issues to business groups and scientists conducting research inthose areas. Position will also involvediligence work, including freedom-to-operate, infringement and validityanalyses, agreement support work (MTAs, CDAs, research collaborations, licensingagreements, etc.), management of external relationships with outside counseland collaborators, and interactions with global affiliates.Trademark: Support and manage a diverse portfolio of trademarks for ourpharmaceutical products and advise management on trademark issues. Responsible for U.S. trademark clearance,prosecution, maintenance and enforcement, and coordinate with ex-US colleagues. Monitor internet for potential trademarkinfringement and take appropriate action, including drafting and filing UDRPcomplaints. Work with internal marketingclients and with other functional areas that support the business, providingstrategic counseling that balances reasoned legal analysis with business needs. Provide legal support for various commercialtransactions, including due diligence and the preparation and negotiation ofagreements.Who You ArePatent attorney with U.S law degree and admitted to the Bar of at leastone state with no fewer than 3 years of experience (but open to those withsignificantly more) in active biotech global patent prosecution is required(with experience in the past 2 years preferably consisting of at least 50%patent filing and prosecution), either in a Pharma or Biotech therapeuticscorporate setting or representing such clients on patent and trademark matters ina law firm. Further required isadmission to practice before the USPTO. Anadvanced degree in the biological sciences is required, with a Ph.D. preferred. Agreement and transactional experienceis required. Experience with clientcounseling and strategic prosecution of active and complex patent portfolios withrespect to biotech therapeutics in development or being commercialized is highlydesirable. Basic knowledge of domesticand international laws, regulations, and processes relating to patents, trademarksand trade dress, internet and domain name matters is required. Experience drafting and filing UDRPcomplaints is preferred. Demonstratedability to collaborate and work as a part of a team, as well work independently,balancing competing priorities in a fast-paced environment. Strong verbal and written communicationskills are required.

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