Intellectual Property Attorney for Strategic Value Enhancement (StriVE)
Company: Sanofi
Location: Cambridge
Posted on: August 7, 2022
Job Description:
BRIEF DESCRIPTIONThe Senior Counsel for StriVE to Win will
report to Principal Counsel of StriVE to Win for the IP Dept. The
position is responsible monetizing IP under direction of the
Principal Counsel of StriVE through systematic identification of
out-licensing and enforcement opportunities. The position is
further responsible for (a) analyzing Sanofi s obligations under
external contracts for potential actions or countermeasures to
avoid costs or otherwise deliver savings, and (b) analyzing Sanofi
s rights under external contracts for potential grounds to extract
additional revenue or other value. The successful candidate will
work transversally with other members of the IP Dept., other legal
depts., R&D, IA, and BD, etc. to identify and evaluate
opportunities with the potential to be monetized, including
identification and assessment of relevant technologies and patents,
evaluating impact and industry attractiveness of the patented
technology, monitoring the competitive landscape and identifying
potential licensees. He/she will also be involved in contacting and
negotiating with potential licensees and will work in close
cooperation with patent operations teams to manage agreements after
signing. He/she must be an IP expert with experience in preparation
and prosecution of patents, have in-depth legal and technical
skills, and demonstrate a willingness to drive successful outcomes.
He/she must have the ability to work collaboratively with all the
stakeholders from the functions noted above. The person must have a
high degree of drive, curiosity, creativity, and the desire to
build their technological, business and negotiation acumen.MAIN
RESPONSIBILITIES
- Identify and evaluate opportunities for and risks associated
with patent licensing, enforcement, and other means of creating
tangible value from IP
- Collaborate closely with prosecution patent attorneys,
litigation attorneys and scientists to identify opportunities for
patent licensing, enforcement, and other means of creating tangible
value from IP
- Build and manage relationships with R&D, business, and IP
and legal leaders to understand Sanofi s businesses and patent
holdings, and align IP monetization strategies with relevant
R&D activities, commercialization plans, and business and
technology strategies
- Provide pragmatic advice grounded in sound business and legal
judgment regarding Sanofi s contractual obligations to external
parties or external parties contractual obligations to Sanofi, and
analyze the contracts to determine whether Sanofi could stop making
payments, reduce payments, or demand obligations to be fulfilled,
as the case may be
- Master tools and competitive intelligence resources to identify
and evaluate monetization opportunities, and to develop valuation
models for such opportunities
- Prepare concise and cogent written materials and presentations
facilitating smarter business decision-making
- Identify, contact, and negotiate with potential licensees
- Assist in drafting and review of license agreements
- Cooperate with Global Patent Litigation Team in StriVE-related
patent enforcement actions
- Ensure proper management of agreements after execution
- Contact existing licensees regarding due and upcoming
payments
- Interact with Legal Finance to ensure proper accounting of
revenues
- Learning from experience for continual improvement and
contribution to define best practices and strategies for enhancing
patent revenue
- Take advice from and instruct outside counsel when appropriate
and independently supervise their work
- Keep informed of new laws, regulations, and industry trends
affecting industry and licensing space, and assists with
development of department-wide policies as neededKEY COMPETENCIES
AND QUALIFICATIONS
- Substantive IP transactional experience, for example
negotiating and drafting patent licensing agreements
- Adaptable, open to new ways of working and finding creative
solutions to overcome complex partnering challenges
- Able to apply a legal and business acumen to a broad range of
IP
- Highly motivated and performance driven individual striving to
excel in fulfilling and defining responsibilities, delivering
quality work product and achieving desired results
- Excellent verbal and written communication skills
- Project management skills and the ability to work in
cross-functional teams for scientific, legal and IP-related
projects
- Ability to manage workload and prioritize among a given number
of active files at any one time
- Team-focused - experience in working with colleagues in other
functions (Legal, R&D, Finance, IA, etc.) with projects and
activities in areas outside of his/her primary areas of
responsibility as needed to contribute to a collegial and
collaborative atmosphere
- Challenges himself/herself in order to deliver even when it is
not completely within his/her control
- Business acumen; the ability to create and explain rationales
and solutions-based approaches to enhancing valueBASIC
QUALIFICATIONS
- For U.S. based candidates, JD from a US law school and USPTO
registration
- Graduate level degree in chemistry, biochemistry or a biologics
field
- At least 5 years of patent experience (prosecution, BD due
diligence, litigation, client counseling, (non-)infringement and
(in)validity evaluations/opinions)
- At least 2 years of in-house biopharmaceutical industry
experience providing IP advice
- At least 2 years of experience negotiating and drafting complex
IP transaction agreements
- For U.S. based candidates, active membership and good standing
in a state barPREFERRED QUALIFICATION
- Litigation experience
- Experience in basic economic, commercial and financial project
valorizationOTHER INFORMATION RELATED TO THE POSITIONThe position
will be located in Cambridge, MA. Periodic travel is also a
requirement - about 5%. As a healthcare company and a vaccine
manufacturer, Sanofi has an important responsibility to protect
individual and public health. All US based roles require
individuals to be fully vaccinated against COVID-19 as part of your
job responsibilities. Fully vaccinated, according to the CDC, an
individual is considered to be "fully vaccinated" fourteen (14)
days after receiving (a) the second dose of the Moderna or Pfizer
vaccine, or (b) the single dose of the J&J vaccine. Fully
vaccinated, for new Sanofi employees, is to be fully vaccinated 14
DAYS PRIOR TO START DATE. 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. At
Sanofi diversity and inclusion is foundational to how we operate
and embedded in our Core Values. We recognize to truly tap into the
richness diversity brings we must lead with inclusion and have a
workplace where those differences can thrive and be leveraged to
empower the lives of our colleagues, patients and customers. We
respect and celebrate the diversity of our people, their
backgrounds and experiences and provide equal opportunity for
all.
Keywords: Sanofi, Cambridge , Intellectual Property Attorney for Strategic Value Enhancement (StriVE), Legal , Cambridge, Massachusetts
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