Director, Counsel - Intellectual Property

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.

Job Overview

We are currently seeking a dynamic, highly motivated and experienced individual for the position of Director, Corporate Counsel, IP.

Job Duties and Responsibilities

• In collaboration with outside counsel, draft, prosecute and manage worldwide patent portfolios related to small molecules and biologics.
• Advise on portfolio exclusivity positions from patent and regulatory law considerations.
• Support global IP litigations including US Hatch-Waxman litigation, IPR, EU national litigation, EP opposition, and other IP-related disputes.
• Work closely with R&D teams to identify and protect new intellectual property; counsel and educate scientists and product development teams on intellectual property matters.
• Review and analyze third-party intellectual property to ensure patentability and freedom to operate, identify any potential issues and advise project teams.
• Support business development activities with active participation in global due diligence teams. Work collaboratively with internal stakeholders, and internal and external counsels to proactively support development and commercial products and business goals.
• Review abstracts, manuscripts, posters, and other information intended for public disclosure for possible IP concerns.
• Manage trademarks and domain names, address copyright questions and issues.
• Provide transactional IP support for various types of agreements including asset transfer agreements, licensing agreements, SRA, MTA, CDA, etc.
• Occasional travel may be required within the United States and internationally (e.g., to Japan & Europe).

Key Core Competencies

• Ability to work both independently and in a team environment with people at different levels within the company. This is an extremely interactive role that requires excellent written and oral communication skills, a collaborative mindset, and the ability to succinctly identify and communicate decisions to various teams.
• Demonstrated experience in identifying innovations, drafting and prosecuting pharmaceutical patent applications in the U.S. and other countries, as well as conducting inventorship, freedom to operate, patent validity and infringement analyses.
• Excellent organizational skills, attention to detail, and ability to handle and prioritize multiple time-sensitive projects.
• Experience with regulatory exclusivities for both BLAs and NDAs.
• Experience with US Post-Grant Proceedings, ANDA litigation, and EP Opposition.  
• Ability to distill complexity into simple terms and to communicate decisively with sound judgment.
• High degree of organizational awareness, ability to connect the dots to understand all the interdependencies and big picture.

Education and Experience

• JD with 5-plus years patent experience in the pharmaceutical/biotech/life science field.
• Registered to practice before the U.S. Patent and Trademark Office.
• Juris Doctorate from an accredited law school and member of at least one U.S. state bar.
• Advanced degree in chemistry, biology, immunology, biochemistry or substantial R&D experience. Advanced degree in chemistry or biochemistry preferred.

The base salary range