Counsel, IP

Job Description

Patent Counsel
This role is responsible for developing and implementing comprehensive patent portfolio strategies across Gilead’s therapeutic areas, focusing on biologic therapeutics. The Patent Counsel will advise research teams regarding risks and opportunities related to Gilead’s intellectual property. As a member of Gilead’s patent prosecution team located in Foster City, California, the Patent Counsel will be a member of Gilead’s cross-functional research teams, working collaboratively with preclinical and clinical scientific teams to advance research and clinical candidates, in accordance with Gilead’s Core Values and Leadership Commitments.
The Patent Counsel will be based in Foster City, CA and is onsite/hybrid- 3 days in the office.

Specific Responsibilities and Skills

The ideal candidate will have a minimum of 4 years of experience with global patent prosecution and patent application drafting, preferably protein biochemistry, pharmaceuticals, or biotechnology. Experience with small molecule chemistry is a plus. The ideal candidate will also have experience performing landscape and FTO (freedom to operate) analysis. Proven ability to manage large molecule biologics patent application drafting and prosecution is required. The ability to manage drafting or prosecution across different therapeutic modalities is a plus. Experience with IP transactions is also a plus. The successful candidate is expected to demonstrate initiative and sound judgment and to have a service-oriented focus. The successful candidate will demonstrate Gilead’s Core Values and Leadership Commitments through their work. The ability to proactively identify IP-related issues potentially impacting the business and to work cross-functionally to devise and communicate clear advice is essential. The successful candidate will be a part of the product attorney group reporting to a senior member of the patent prosecution team.

Specific responsibilities will include:

• Oversee and develop patent portfolios to protect Gilead’s product pipeline with a focus on biologic therapeutics.
• Draft and prosecute patent applications in U.S. and foreign patent offices.
• Effectively supervise and manage activities of outside counsels.
• Advise non-legal colleagues regarding patent strategy and identification of patentable inventions.
• Effectively partner with patent informatics on strategies for FTO and patent landscape searches. Conduct FTO and patent landscape analyses. Counsel cross-functional research teams on findings.
• Review and assist in the drafting and negotiation of nondisclosure, research, license and other agreements involving the use, transfer, or ownership of intellectual property.
• Review proposed publications regarding Gilead’s research programs for potential IP issues.
• Prepare and conduct presentations to a variety of audiences on IP topics.
• Assist with procuring and/or advising on regulatory exclusivities and data protection.

Specific Education & Experience Requirements

• Requires a Juris Doctorate from an accredited law school and admission before a State bar.
• Admission to practice before the USPTO.
• Bachelor’s degree in biology, biochemistry, chemistry or related sciences, advanced degree in biochemistry or molecular biology is a plus.
• 4 years of experience with global patent prosecution and patent application drafting, preferably protein biochemistry, pharmaceuticals, or biotechnology. Experience with small molecule chemistry is a plus.
• Experience preparing and prosecuting patent applications in a law firm or in-house, with considerable focus on biologic therapeutics.
• Experience with FTO and patent landscape analysis.
• Must have excellent written and verbal communications skills.
• Must have strong client service orientation.
• Must have strong commitment to integrity, teamwork, excellence, inclusion, and accountability.
• Must possess the ability to work well with others in a team setting.
• Organizational skills, exceptional time management and attention to detail are a must.

People Leader Accountabilities:

• Create Inclusion - knowing the business value of diverse teams, modeling inclusion, and embedding the value of diversity in the way they manage their teams.
• Develop Talent - understand the skills, experience, aspirations and potential of their employees and coach them on current performance and future potential. They ensure employees are receiving the feedback and insight needed to grow, develop and realize their purpose.
• Empower Teams - connect the team to the organization by aligning goals, purpose, and organizational objectives, and holding them to account. They provide the support needed to remove barriers and connect their team to the broader ecosystem.