Senior IP Counsel – Business Partner (80-100%)

Switzerland, Basel

Today Lonza is a global leader in life sciences. We are more than 15,000 employees in more than 100 locations around the world. While we work in science, there’s no magic formula to how we do it. Our greatest scientific solution is talented people working together, devising ideas that help businesses to help people. In exchange, we let our people own their careers. Their ideas, big and small, genuinely improve the world. And that’s the kind of work we want to be part of.

Lonza's Specialty Ingredients Segment is a trusted and innovative supplier of microbial control solutions and chemical technologies used in a wide range of industrial and consumer solutions. Our vast product portfolio of microbial control and chemical technologies offer quality products backed by technical and regulatory expertise, meeting our customers’ current and future needs. For our specialty chemicals services business we are looking for a Senior IP Counsel – Business Partner.

In a global capacity, the successful candidate will (i) provide expert and business-relevant advice to business unit leaders on IP (Intellectual Property) strategy, transactions and patent filings globally; (ii) draft and negotiate IP licenses and other IP-related contractual provisions and (iii) manage, build, protect and enforce intellectual property portfolios. In addition, the successful candidate will perform strategically and work independently as well as in team environments to provide sound business-oriented counseling on all IP matters.

Key responsibilities:

  • Decides and directs IP strategy aligned with Business Unit Strategy or R&D program strategy
  • Drives product-development teams in an IP-minded way to create business advantage.
  • Leads, supervises and/or coordinates competitive IP-intelligence projects for area(s) of responsibility
  • Leads IP strategy team which may include other IP attorneys, R&D and business team members
  • Decides or supervises strategic patent filing and prosecution within area(s) of responsibility as business partner
  • Leads strategic/risk review of post-grant proceedings and other inter partes matters
  • Formulates enforcement and defensive positions, as well as design-around strategies
  • Negotiates, structures and drafts (or trains others in) CDAs, MTAs, IP license agreements, R&D agreements and other IP-related agreements
  • Negotiates IP terms in commercial contracts (MSA, DSA, DMSA etc.) and decides on deviations from standard IP terms
  • Supports IP Due Diligence in M&A projects.
  • Decides and delivers necessary IP training required in area(s) of responsibility as business partner.
  • Provides or supervises Freedom-to-Operate (FTO) analyses. Decides and recommends on course of action, including risk assessment and risk mitigation
  • Prepares and conducts annual global IP portfolio review in area(s) of responsibility as business partner
  • Prepares and takes decisions on direction for IP-related meetings
  • Directs decisions or supervises drafting of patents, handles directly (or supervises junior lawyers or external counsel) in prosecution of patents
  • Counsels in area(s) of responsibility as business partner on patent matters and patent strategy
  • Counsels on an expert basis on all aspects of IP law in all Lonza relevant jurisdictions and reconciles conflicting laws, risks and complexities related thereto
  • Decides on post-grant-proceeding strategy and manages same
  • Reviews or supervises the review of publications (advertising material, scientific articles, presentations or posters, etc.) in the area(s) of responsibility as business partner
  • Provides IP litigation support and supervises, coordinates or leads enforcement or defense activities in the area(s) of responsibility as business partner
  • May lead a team of IP Counsels and/or Patent Specialists in area(s) of responsibility as Business Partner
  • Mentors junior IP counsels and other IP related roles

Key requirements:

  • Scientific Degree (Master) in Chemistry, Chemical Engineering, Biochemistry
  • Qualified Patent Attorney (or equivalent) EP, US, UK, CH, DE (or equivalent)
  • Considerable experience in Corporate IP Department or IP Law firm with extensive post-qualification experience as qualified patent attorney and/or attorney at law
  • Proactive, problem-solving, independent and autonomous, self-motivating personality
  • Excellent in prioritizing work, coordinating diverse and complex activities (from patent filing, finance, BU and IP strategy, to science), well capable of multitasking and functioning under pressure
  • Excellent communication skills, ability to negotiate mainly internally and often at higher levels
  • Ability to work well with and lead diverse personalities in a team
  • Proficient in written and oral communication in English, German is very nice to have

People come to Lonza for the challenge and creativity of solving complex problems and developing new ideas in life sciences. In return, we offer the satisfaction that comes with improving lives all around the world. The satisfaction that comes with making a meaningful difference.

Reference: R24047