Lead Patent Counsel

United States, Walkersville (Maryland)

Today, Lonza is a global leader in life sciences operating across three continents. 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. 

In a global capacity, the incumbent’s roles include, but are not limited to, (i) providing expert and business-relevant advice to business unit leaders on IP strategy, transactions and patent filings globally; (ii) drafting and negotiating IP licenses and IP-related agreement provisions, (iii) conducting and evaluating IP-related searches and providing opinions thereon and (ivii) managing, building, protecting and enforcing intellectual property portfolios. The incumbent will be required to perform strategically and work independently and in team environments to provide sound business-oriented counseling on all IP matters. He/she may also mentor or supervise individuals within the IP/Legal Department. 

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 including FTO, patentability and landscape searches/analysis and opinions.   

·       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 parts 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.  

·         Participates in and/or takes the lead in 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. 

·        Reviews publications and public disclosures (advertising material, scientific articles, presentations or posters, etc.) from an IP-perspective. 

·       Provides IP litigation support and supervises, coordinates or leads enforcement or defense activities 

·       Mentors and supports junior IP attorneys and other IP related roles. 

Key requirements: 

·       Highly experienced patent attorney, preferably from a Corporate/in-house IP Department or IP Law firm.  

·       IP Prosecution/ IP Transactional experience required. 

·       Registered Patent Attorney; Juris Doctor Required. 

·       Proactive, problem-solving, independent and autonomous, self-motivating personality.  

·         Good team player. with team management expertise and skills 

·         Excellent communication skills required.  

·        Ability to negotiate mainly internally and externally at high levels.  

·        Proficient in written and oral communication in English.  

·         Excellent in prioritizing work, coordinating diverse and complex activities, well capable of multitasking and functioning well under pressure.  

·         Proven ability to work well with diverse personalities in a team and working well cross- functionally. 

Every day, Lonza’s products and services have a positive impact on millions of people. For us, this is not only a great privilege, but also a great responsibility. How we achieve our business results is just as important as the achievements themselves. At Lonza, we respect and protect our people and our environment. Any success we achieve is no success at all if not achieved ethically.  

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. 

Lonza is an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, religion, color, national origin, sex, sexual orientation, gender identity, age, status as a qualified individual with disability, protected veteran status, or any other characteristic protected by law. 

Reference: R44738