Senior Patent Attorney / Senior Patent Agent (US)

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The Position

Embark on a journey of strategic influence as the Senior Patent Attorney for the new Customer Area Near Patient Care (NPC) at Roche. In this critical role, you will navigate the world of patents, providing comprehensive IP support to protect our innovations and fuel our business goals. This is your chance to shape the intellectual property landscape within a leading healthcare innovator and to leave a lasting impact on the industry.

The Opportunity

Within and throughout the NPC Customer Area (CA) with a focus which includes nucleic acid diagnostic technologies and products, including Roche’s POC (Point of Care) PCR-based tests, you will independently, but in alignment with the line manager to:

• Manage and expand the system, diagnostic assay, and reagent-related IP portfolio to protect Roche’s innovative technologies including biochemical, and possibly also hardware and digital work results, and ensure freedom to operate with regard to the above technologies and associated products which are used all over the world. 

• Be responsible for leading and providing customer-oriented comprehensive IP support including invention harvesting, IP protection, IP risk analysis and risk management for development projects, and where appropriate proposing and implementing patent legal, licensing or product development modification measures or adjusting product strategies in alignment with the business, serving as a trusted advisor to the management and valued project team member.

• Provide clear, informed and sophisticated counseling to stakeholders engaged in research & development, manufacturing, business development/partnering, portfolio and lifecycle management and commercialization activities, and represents the IP department in the Molecular Point of Care Lifecycle Team 

• Render legal opinions with respect to patentability, validity, infringement and freedom to operate and/or provide support to legal team drafting such legal opinions 

• Be responsible for  drafting, filing and managing patent portfolios in strategic alignment with business decisions, needs and priorities. This includes patent and design application preparation, prosecution, maintenance and/or defense of US and foreign patent filings and patent office administrative actions (e.g. inter partes reviews, interferences, reexaminations, post grant reviews, invalidity proceedings), all of the above directly by yourself or supervising outside counsel,

• Apply knowledge of global patent trends and case law developments, especially in US and EP, in combination with technical understanding, to devise patent strategies and advice, and align the strategies with the Diagnostics IP Leadership team and implement them accordingly

• Train and mentor colleagues on IP matters

• Assist and/or conduct due diligence assessments and counseling based on these assessments, including freedom-to-operate, infringement and validity analyses, and risk evaluation and mitigation, and supports IP-related transactional contract projects (including MTAs, CDAs, research collaborations, and licensing agreements), and litigation activities

• Manage external relationships with outside counsel and collaborators, including substantial interactions within a multicultural global patent function

• Be accountable for delivering IP work on-time, on-target and within-budget team goals and results 

• Support the IP Monetization team by assessing infringements by third parties of Roche IP rights which are taken into consideration in an enforcement or licensing strategy in coordination with the Diagnostics IP Leadership team and the NPC senior management 

• Contribute to co-create the new NPC IP department and support work on process improvements within the IP department

Who You Are

• A bachelor’s degree in Chemistry, Biochemistry, or similar fields is required; Advanced Degree preferred; 

• US patent agent or attorney qualification required; registration to practice before USPTO required. For US attorney applicants, JD degree required, member in good standing of at least one state bar

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