Senior Patent Attorney / Senior Patent Agent (US)

Roche

Location
California-Pleasanton
Description
<div id="jobDescriptionText" class="jobsearch-JobComponent-description css-16y4thd eu4oa1w0"><div> <p>Roche fosters diversity, equity and inclusion, representing the communities we serve. When dealing with healthcare on a global scale, diversity is an essential ingredient to success. We believe that inclusion is key to understanding people’s varied healthcare needs. Together, we embrace individuality and share a passion for exceptional care. Join Roche, where every voice matters.</p> <p></p> <div> The Position </div> <p> 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.</p> <p></p> <p><b> The Opportunity</b></p> <p> Within and throughout the NPC Customer Area (CA) with a focus which includes nucleic acid diagnostic technologies and products, including Roche’s POC PCR-based tests, you will independently, but in alignment with the line manager to:</p> <ul> <li><p> 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.</p></li> <li><p> 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.</p></li> <li><p> Provide clear, informed and sophisticated counseling to stakeholders engaged in research &amp; 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</p></li> <li><p> Render legal opinions with respect to patentability, validity, infringement and freedom to operate and/or provide support to legal team drafting such legal opinions</p></li> <li><p> 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,</p></li> <li><p> 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 DIA IPLT and implement them accordingly</p></li> <li><p> Train and mentor colleagues on IP matters</p></li> <li><p> 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</p></li> <li><p> Manage external relationships with outside counsel and collaborators, including substantial interactions within a multicultural global patent function</p></li> <li><p> Be accountable for delivering IP work on-time, on-target and within-budget team goals and results</p></li> <li><p> 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 DIA IPLT and the NPC senior management</p></li> <li><p> Contribute to co-create the new NPC IP department and support work on process improvements within the IP department</p></li> </ul> <p></p> <p><b> Who You Are</b></p> <ul> <li><p> A bachelor’s degree in Chemistry, Biochemistry, or similar fields is required; Advanced Degree preferred;</p></li> <li><p> 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</p></li> <li><p> 5+ years of practical experience in a patent law firm or in an industrial patent department for Patent Attorney/ Patent Agent.</p></li> <li><p> 8+ years of practical experience in a patent law firm or in an industrial patent department for Sr. Patent Attorney/ Sr. Patent Agent.</p></li> </ul> <p></p> <p><b> Additional Skills</b></p> <ul> <li><p> Experience in patenting and FTO work of in vitro diagnostic assays or nucleic acid technologies preferred.</p></li> <li><p> Experience in managing outside counsel preferred.</p></li> <li><p> Strong analytical and negotiating skills.</p></li> <li><p> Strong business knowledge and the ability to find creative solutions that support business objectives and safeguard/ enforce the interests of the Customer Area. Strong business acumen so as to serve as business partner to executive leadership.</p></li> <li><p> Flexibility to manage changing priorities and handle numerous divergent responsibilities simultaneously.</p></li> </ul> <p></p> <p><b> Communication and Leadership:</b></p> <ul> <li><p> Pro-active and confident individual who is committed to endorsing and driving change.</p></li> <li><p> Strong verbal and written communication</p></li> </ul> <p></p> <p><i> This position will be based in Pleasanton, CA. Remote option is not available.</i></p> <p></p> <p> Relocation benefits are available for this posting.</p> <p></p> <p> <i>The expected salary range for this position based on the primary location of California is $170,900 to $317,300 (Patent Attorney / Sr. Patent Attorney) or $127,900 to $237,500 (Patent Agent / Sr Patent Agent). Actual pay will be determined based on experience, qualifications, geographic location, and other job-related factors permitted by law. A discretionary annual bonus may be available based on individual and Company performance. This position also qualifies for the benefits detailed at the link provided below.</i></p> <p> Benefits</p> <p></p> <div> <br> Who we are </div> <p> At Roche, more than 100,000 people across 100 countries are pushing back the frontiers of healthcare. Working together, we’ve become one of the world’s leading research-focused healthcare groups. Our success is built on innovation, curiosity and diversity.</p> <p></p> <p> Roche is an equal opportunity employer and strictly prohibits unlawful discrimination based upon an individual’s race, color, religion, gender, sexual orientation, gender identity/expression, national origin/ancestry, age, mental/physical disability, medical condition, marital status, veteran status, or any other characteristic protected by law.</p> <p></p> <p> If you have a disability and need an accommodation in relation to the online application process, please contact us by completing this form Accommodations for Applicants.</p> </div></div>
Posted
Updated
Practice Areas
Intellectual Property
Specialties
Health Care, Patent Prosecution
Experience
5+ years
Employer Type
In-House