Executive Director, IP

Role Overview

• Develop and refine intellectual property strategy for 4DMT products and platforms; present IP strategy updates to executive leadership, as needed.
• Responsible for implementing key elements of 4DMT’s intellectual property strategy, and managing its patent, trade secret, and trademark portfolio; implements a strategy for IP lifecycle management.
• Directs outside counsel in the preparation and prosecution of applications and responding to office actions; directs outside counsel in evaluating the patentability of invention submissions and registrability of trademarks globally; manages related outside counsel budgets.
• Identifies strategic areas for patenting, trade secret protection, and trademarking; collaborates with R&D, CMC, Clinical Science, and other functions to proactively identify and develop patentable intellectual property to prepare, file, and prosecute.
• Manages patentability, freedom-to-operate, infringement, validity, and regulatory exclusivity analyses.
• Supports and manage IP disputes and administrative proceedings, including oppositions and post-grant challenges.
• Identifies and tracks 4DMT trade secrets and provides counsel with respect to 4DMT’s trade secret protection practices.
• Provides IP perspective and counseling at 4DMT meetings and presents on IP topics.
• Counsels and trains internal clients on intellectual property practices and policies.
• Conducts IP due diligence for business development activities and supports IP due diligence related to financing activities.
• Drafts, reviews, and negotiates agreements to support R&D and CMC activities, including NDAs, MTAs, MSAs, sponsored research agreements, consulting agreements, and licenses.
• Collaborates with Legal colleagues, Business Development, and other key leaders and functions on key strategic agreements, including licenses, collaboration agreements, and other business development efforts.
• Assists with other Legal Department matters, including litigation support, SEC reporting (IP-related sections), records management, compliance activities, and template projects.
• Other duties as assigned; nothing in this job description restricts management’s right to assign or reassign duties and responsibilities to this job at any time.

Requirements

• J.D. degree or equivalent from an accredited law school
• J.D. or M.S. in molecular biology, genetics, biochemistry, or other biological field related to the biopharma industry
• Admission to at least one U.S. state bar
• Registered to practice before the United States Patent and Trademark Office
• 14+ years of patent prosecution experience as an attorney in the life sciences field, particularly in biopharma (can be a combination of law firm and in-house experience).
• Strong knowledge of patent, trade secret, and trademark practices, as well as current U.S. and foreign patent, trade secret, and trademark laws
• In-house experience in and knowledge of drug development, with expertise in genetic medicines strongly preferred; in-house experience at one or more publicly traded, commercial-stage biotechnology, pharmaceutical, or biopharmaceutical companies.
• Experience managing outside IP counsel and non-attorney legal staff
• Experience in counseling life sciences R&D and CMC teams with respect to day-to-day transactions, including experience reviewing and negotiating confidentiality agreements, manufacturing agreements, material transfer agreements, sponsored research agreements, master services agreements, consulting agreements, and licenses.
• Prior experience providing IP input on life sciences strategic transactions.
• Prior IP litigation experience.
• Excellent analytical and organizational skills and demonstrated ability to effectively collaborate and manage several simultaneous projects under deadline pressure.
• Excellent communication (verbal and written), listening, negotiation, and presentation skills.
• Solid interpersonal skills and the demonstrated ability to influence and partner across all levels of the Company.
• Highest integrity, excellent judgment, and the ability to proactively recognize and effectively communicate legal issues to the Chief Legal Officer and other members of company management.

Benefits

• Equal employment opportunities to all employees and applicants for employment without regard to race, color, religion, gender, sexual orientation, national origin, age, disability, genetic information, marital status, status as a covered veteran, and any other category protected under applicable federal, state, provincial and local laws.