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Senior Patent Counsel, Director

Flagship Pioneering, Inc.
Somerville, United Statesfull_timeVerifiedPosted 11 Jan 2023

About the role

About Generate Biomedicines

Generate Biomedicines is a new kind of therapeutics company – existing at the intersection of machine learning, biological engineering, and medicine – pioneering Generative Biology™ to create breakthrough medicines where novel therapeutics are computationally generated, instead of being discovered. Generate has built a machine learning-powered biomedicines platform with the potential to generate new drugs across a wide range of biologic modalities. This platform represents a potentially fundamental shift in what is possible in the field of biotherapeutic development.

We pursue this audacious vision because we believe in the unique and revolutionary power of generative biology to radically transform the lives of billions, with an outsized opportunity for patients in need. We are seeking collaborative, relentless problem solvers that share our passion for impact to join us!

Generate was founded in 2018 by Flagship Pioneering and has received over $420 million in funding, providing the resources to rapidly scale the organization. The Company has offices in Somerville and Andover, Massachusetts with over 200 employees.

The Role:

Generate Biomedicines is looking for an experienced Senior Patent Counsel (Director level) to join its growing legal team. Reporting to the Vice President & Head of Intellectual Property and located in the company’s headquarters in Somerville, MA, the Senior Patent Counsel will manage a broad range of intellectual property matters, helping to build and maintain a strong IP portfolio and protecting a broad range of internal and in-licensed innovation and technology. The individual will work closely with scientists, corporate strategy, business development, medical, regulatory, and other key stakeholders. Generate is seeking individuals with excellent command of U.S. and international intellectual property laws and expertise in building complex patent estates for protein therapeutics and related platform technologies. We are searching for a driven, enthusiastic, and self-motivated individual who is comfortable multitasking and working independently in a fast-paced, collaborative, fun, start-up biotech environment.

As Senior Patent Counsel you will:

  • Identify patentable inventions through regular interactions with internal R&D project teams
  • Work with outside counsel to draft, file, and prosecute patent applications and to manage complex global patent estate
  • Conduct due diligence assessments and counsel based on those assessments, including freedom-to-operate, patentability, validity, and IP landscape assessments
  • Assist in the negotiation and drafting of collaboration, licensing, and other agreements
  • Assist with challenging and defending patents in IP litigation, PTAB proceedings (e.g., IPR/PGRs), opposition proceedings, and other forums
  • Manage outside counsel and corresponding budget for patent prosecution and IP due diligence activities
  • Review publications, presentations, press releases, and other materials for clearance
  • Educate and advise scientists and senior management on important IP issues and advance IP/patent awareness within Generate’s company culture
  • Contribute to and maintain positive relationships with strategic external relationship counterparts
  • Keep abreast of changes in IP law that affect Generate and its business goals
  • Serve as a role model and a champion of the legal department through work ethic, attitude, interpersonal skills, and successful results

To be successful in this role, you have:

  • A J.D. from reputable law school
  • Admission in good standing to at least one state bar
  • Admission in good standing to practice before the U.S. Patent and Trademark Office
  • An advanced degree (e.g., MS or Ph.D.) in molecular biology, biochemistry, or similar field
  • 7+ years of experience in patent prosecution involving biotechnology inventions, preferably with a mix of significant in-house experience and law firm experience; experience with machine learning or artificial intelligence technologies is not required, but would be looked upon favorably
  • Direct experience with preparing and prosecuting patent applications, managing global patent portfolios, and performing freedom-to-operate, patentability, validity, and landscape analyses in the field of biologic therapeutics
  • IP transaction experience, including due diligence and IP-related agreements (e.g., licensing, collaboration, and sponsored research agreements)
  • Experience with U.S. and/or foreign adversarial proceedings (such as patent litigation, Inter Partes Reviews, Post Grant Reviews, and oppositions)
  • Familiarity with scientific and IP databases
  • Experience p

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Company

Flagship Pioneering, Inc.

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