Patent Counsel

Patent Counsel

As Patent Counsel, Synthetic Molecules, you will be part of the Global Synthetic Molecules Patent team within Sanofi´s Global Intellectual Property Department. Based in Cambridge, Massachusetts, you will be dedicated to all aspects of patent protection for a diverse range of programs across Sanofi's global business units primarily related to small molecules. You will advise on a wide range of intellectual property matters, including patent preparation and prosecution, worldwide patent portfolio management, overall IP strategy, patentability, and freedom-to-operate analyses.

Main Responsibilities:

• Prepare, file, and prosecute US, EPO, and foreign patent applications in chemical and pharmaceutical areas.

• Interact with colleagues at all levels of the organization (including Research & Development, Project Management, Business Development, Franchise, Industrial Affairs) in the US and Europe to provide counselling and proactively solicit invention disclosures.

• Provide patentability evaluation of IP related to internal, collaborative, and external projects.

• Manage post issuance patent proceedings, such as post grant reviews, inter partes reviews, and oppositions.

• Participate in due diligence of license agreements and the drafting, reviewing, and negotiation of agreements covering intellectual property rights.

• Conduct, direct, and analyze patent searches and render opinions on validity, non-infringement, and patent avoidance of third-party patents.

• Review proposed research papers and other publications for any impact on patent strategies.

Key Competencies:

• Extensive experience in handling complex pharmaceutical IP matters and counselling senior and executive level clients/colleagues is required.

• Experience in managing US post-grant proceedings, EP Oppositions, IP due diligence, and complex agreement drafting is required.

• Able to independently handle preparation and global prosecution of patent applications.

• Ability to work in a team within an international professional network and interact with colleagues in other countries.

• Orange Book listing and patent term extension/supplementary protection certificate experience is preferred.

Qualifications:

• A Juris Doctor from a recognized, accredited law school.

• Active membership and good standing in NJ, MA, or other state bar.

• Registered US Patent Attorney is required.

• A minimum of a graduate degree (MS, PhD) in a chemical or biochemical science is required.

• A minimum of 8 years of patent law experience gained in-house and/or in a law firm.

• A motivated, proactive person, exhibiting initiative to contribute to the team beyond the mere handling of assigned projects.

• This position may require up to 10% overall travel (domestic and international).

Sanofi Inc. and its U.S. affiliates are Equal Opportunity and Affirmative Action employers committed to a culturally diverse workforce. All qualified applicants will receive consideration for employment without regard to race; color; creed; religion; national origin; age; ancestry; nationality; marital, domestic partnership or civil union status; sex, gender, gender identity or expression; affectional or sexual orientation; disability; veteran or military status or liability for military status; domestic violence victim status; atypical cellular or blood trait; genetic information (including the refusal to submit to genetic testing) or any other characteristic protected by law.

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