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Chief Patent Counsel
at AbbVie in Lake County, IL
Chief Patent Counsel-13000001F8
Description
AbbVie (NYSE:ABBV) is a global, research-based biopharmaceutical company formed in 2013 following separation from Abbott. AbbVie combines the focus and passion of a leading-edge biotech with the expertise and capabilities of a long-established pharmaceutical leader to develop and market advanced therapies that address some of the world’s most complex and serious diseases. In 2013, AbbVie will employ approximately 21,000 people worldwide and markets medicines in more than 170 countries.
Job Description:
The Patent and Trademark Group handles patent, trademark, domain name, trade secret and copyright matters, including counseling, prosecution and due diligence. The team, headquartered in North Chicago, Illinois, interacts with outside entities, outside counsel, and clients across the organization to capture, protect and utilize intellectual property in support of AbbVie’s business strategies. The P&T Group is part of the larger Intellectual Property Group, which also consists of an IP Litigation and Strategy Group, in the AbbVie Legal Division.
The Chief Patent Counsel will have primary responsibility to manage, inspire and lead the P&T Group, as well as developing and implementing intellectual property strategies. The Chief Patent Counsel will have a deep understanding of the current AbbVie products and pipeline in order to develop, protect, and build on those IP assets in close cooperation with the business. The Chief Patent Counsel will provide advice to the business leaders on a broad range of global IP issues. The Chief Patent Counsel will have responsibility to manage the budget and other resources and will join the IP Group’s leadership team.
The Chief Patent Counsel’s duties include:
Client counseling on intellectual property issues including integrating intellectual property considerations into business plans, developing intellectual property risk avoidance and mitigation strategies, and strategies for enhancing the scope and strength of our intellectual property portfolio;
Supervising the P&T Group’s filing and prosecution of patent applications to ensure that application filings are of high quality and target commercially significant inventions;
Providing transaction support including licensing agreements, due diligence, acquisitions, divestitures and strategic alliances;
Overseeing trademark, copyright, domain name, and trade secret surveillance and leveraging combined intellectual property into comprehensive positions for protecting and advancing associated business initiatives;
Mentoring in-house counsel;;
Selecting and helping in-house counsel manage outside counsel in the preparation and prosecution of patent and trademark applications;
Selecting and managing reexamination and opposition/interference counsel, developing opposition/interference strategy and managing those proceedings;
Evaluating global intellectual property laws and proposed laws to develop advocacy positions aligned with business strategies;
Guiding in-house and outside counsel in conducting white space, freedom to operate and similar analyses to inform business plans/products;
Managing the associated budget.
Qualifications
The successful candidate will possess the following:
15-20 years experience with patent and trademark matters including prosecution, litigation or other adversarial proceedings management responsibilities, preferably in the pharmaceutical or biotech fields;
Experience leading or managing attorneys is required;
Registration with the USPTO preferred;
Strong client relationship skills, including the ability to convey and discuss intellectual property issues in understandable terms and to establish, manage and leverage relationships with internal and external partners;
Creative thinking and problem solving;
Strong skills working in team and collaborative environments;
Results oriented;
Ability to serve as a mentor and aid in the development of co-workers;
Extraordinary interpersonal skills;
Top academic and professional credentials, and good standing in the bar(s) where licensed.
Financial management skills preferred.
A Juris Doctorate (J.D.) is required.
Significant Work Activities and Conditions
Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day)
Job Classification: Experienced
Job: LEGAL
Primary Location: USA-Illinois-Lake County
Organization: VGNC-GenCounsel
Schedule: Full-time
Shift: Day
Travel: Yes, 5 % of the Time
Description
AbbVie (NYSE:ABBV) is a global, research-based biopharmaceutical company formed in 2013 following separation from Abbott. AbbVie combines the focus and passion of a leading-edge biotech with the expertise and capabilities of a long-established pharmaceutical leader to develop and market advanced therapies that address some of the world’s most complex and serious diseases. In 2013, AbbVie will employ approximately 21,000 people worldwide and markets medicines in more than 170 countries.
Job Description:
The Patent and Trademark Group handles patent, trademark, domain name, trade secret and copyright matters, including counseling, prosecution and due diligence. The team, headquartered in North Chicago, Illinois, interacts with outside entities, outside counsel, and clients across the organization to capture, protect and utilize intellectual property in support of AbbVie’s business strategies. The P&T Group is part of the larger Intellectual Property Group, which also consists of an IP Litigation and Strategy Group, in the AbbVie Legal Division.
The Chief Patent Counsel will have primary responsibility to manage, inspire and lead the P&T Group, as well as developing and implementing intellectual property strategies. The Chief Patent Counsel will have a deep understanding of the current AbbVie products and pipeline in order to develop, protect, and build on those IP assets in close cooperation with the business. The Chief Patent Counsel will provide advice to the business leaders on a broad range of global IP issues. The Chief Patent Counsel will have responsibility to manage the budget and other resources and will join the IP Group’s leadership team.
The Chief Patent Counsel’s duties include:
Client counseling on intellectual property issues including integrating intellectual property considerations into business plans, developing intellectual property risk avoidance and mitigation strategies, and strategies for enhancing the scope and strength of our intellectual property portfolio;
Supervising the P&T Group’s filing and prosecution of patent applications to ensure that application filings are of high quality and target commercially significant inventions;
Providing transaction support including licensing agreements, due diligence, acquisitions, divestitures and strategic alliances;
Overseeing trademark, copyright, domain name, and trade secret surveillance and leveraging combined intellectual property into comprehensive positions for protecting and advancing associated business initiatives;
Mentoring in-house counsel;;
Selecting and helping in-house counsel manage outside counsel in the preparation and prosecution of patent and trademark applications;
Selecting and managing reexamination and opposition/interference counsel, developing opposition/interference strategy and managing those proceedings;
Evaluating global intellectual property laws and proposed laws to develop advocacy positions aligned with business strategies;
Guiding in-house and outside counsel in conducting white space, freedom to operate and similar analyses to inform business plans/products;
Managing the associated budget.
Qualifications
The successful candidate will possess the following:
15-20 years experience with patent and trademark matters including prosecution, litigation or other adversarial proceedings management responsibilities, preferably in the pharmaceutical or biotech fields;
Experience leading or managing attorneys is required;
Registration with the USPTO preferred;
Strong client relationship skills, including the ability to convey and discuss intellectual property issues in understandable terms and to establish, manage and leverage relationships with internal and external partners;
Creative thinking and problem solving;
Strong skills working in team and collaborative environments;
Results oriented;
Ability to serve as a mentor and aid in the development of co-workers;
Extraordinary interpersonal skills;
Top academic and professional credentials, and good standing in the bar(s) where licensed.
Financial management skills preferred.
A Juris Doctorate (J.D.) is required.
Significant Work Activities and Conditions
Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day)
Job Classification: Experienced
Job: LEGAL
Primary Location: USA-Illinois-Lake County
Organization: VGNC-GenCounsel
Schedule: Full-time
Shift: Day
Travel: Yes, 5 % of the Time
Published at 26-09-2013
Viewed: 788 times
Viewed: 788 times