Senior Patent Attorney / Senior Patent Agent (US)
Company: Disability Solutions
Location: Pleasanton
Posted on: October 2, 2024
Job Description:
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.The
PositionEmbark 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 OpportunityWithin 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 departmentWho 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
- 8+ years of practical experience in a patent law firm or in an
industrial patent department for Sr. Patent Attorney/ Sr. Patent
Agent.Additional Skills
- Experience in patenting and FTO work of in vitro diagnostic
assays or nucleic acid technologies preferred.
- Experience in managing outside counsel preferred.
- Strong analytical and negotiating skills.
- 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.
- Flexibility to manage changing priorities and handle numerous
divergent responsibilities simultaneously.Communication and
Leadership:
- Pro-active and confident individual who is committed to
endorsing and driving change.
- Strong verbal and written communicationWe ask you for a current
CV. Further documents are not required at present, although we
would be pleased to receive your letter of motivation. This
position will be based in Pleasanton, CA. Remote option is not
available.Relocation benefits are available for this posting.The
expected salary range for this position based on the primary
location of California is $170,900 to $317,300 (Sr. Patent
Attorney) or $127,900 to $237,500 (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.Who we areAt 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.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.If you
have a disability and need an accommodation in relation to the
online application process, please contact us by completing this
form .
Keywords: Disability Solutions, Napa , Senior Patent Attorney / Senior Patent Agent (US), Sales , Pleasanton, California
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