The Intellectual Property (IP) Manager will have the opportunity to guide global strategy for CURE’s IP portfolio. The position reports to the COO with daily oversight from CURE’s IP Attorney.
This IP Manager will work directly with the product development and manufacturing teams to manage and build CURE’s intellectual property estate. With the support of CURE’s IP attorney, the IP Manager will identify protectable aspects of new inventions, develop and implement patent prosecution strategies, build patent estates, draft and file patent applications, conduct examiner interviews, draft PTAB appeal briefs, and respond to office actions, and other communications from the USPTO to ensure the successful issuance and maintenance of patents.
· Analyze new discoveries to identify opportunities for expanding IP coverage
· Assist CURE inventors in drafting invention disclosure forms
· Review proposed public disclosures for potential impact on IP position
· Evaluate and communicate patentability of inventions; conduct searches of scientific journals and patent databases; generate and assess competitive landscapes.
· Identify patentable inventions through regular interactions with product development and manufacturing teams and collaborators, including evaluating inventions, conducting prior art searches, and generating and executing on corresponding patent protection strategies.
· Carry out patentability and freedom-to-operate analyses.
· Build and protect CURE’s brand and trademark estate.
· Conduct workshops and lectures to educate CURE’s staff about relevant IP topics.
· Support CURE’s IP attorney to prepare and file patent applications, reply to communications from the USPTO during the patent application process, work with foreign patent counsel and prepare letters of instruction to foreign counsel for filing and prosecution of foreign counterparts to US patent applications.
· Support CURE’s IP attorney to prepare and communicate legal opinions on patentability, validity, freedom to operate and infringement.
· Participate in portfolio analysis and prioritization.
· Manage due diligence for patent portfolios of competitors and potential partners
· Manage external counsel on outsourced patent preparation and prosecution matters.
· Daily processing of incoming and outgoing correspondence (including correspondence with outside counsel, the U.S. Patent & Trademark Office, foreign patent offices, authorities (IB) and annuity service vendor). Electronic docketing and paper docketing.
· Implement, maintain, and manage docket database, as well as prepare patent docket reports and IP portfolio reports.
· Ensure that all docket dates have been cleared daily and that all patent related deadlines are met.
· Monitor status of patents and patent applications.
· Assist inventors and management with the completion and submission of documents to USPTO.
· Managing the integration of acquired properties and transfer of divested properties.
· Other duties and projects as assigned.
JOB REQUIREMENTS AND QUALIFICATIONS
Education: Bachelor's degree in the life sciences (e.g., pharmacy, chemistry or biology). Graduate degree and patent agent exam (USPTO) are strongly preferred.
Experience: At least three years of experience in an academic technology transfer, life science company, or law firm, managing and building IP portfolios. Academic or in-house experience preferred, with a focus on lifecycle portfolios.
· Understanding of pharmaceutical research, product development, and manufacturing, and its interface with pharmaceutical patent law
· Experience managing patent prosecution working as a paralegal, patent agent, intellectual property manager, or other equivalent position
· Working knowledge of patent prosecution deadlines, forms, processes, and terminology
· Understands timelines and demonstrates a sense of urgency in work and in responding to customers and colleagues.
· Proactive, plans ahead, anticipates challenges accomplishes what is expected and adds value to the job
· Ability to clearly communicate, both verbally and in writing, to all levels of the organization
· Problem Solver: Ability to apply critical and creative thinking to; improving processes, meeting challenges and solving problems
· A demonstrated commitment to high professional ethical standards and a diverse workplace
· Ability to adapt to a fast paced continually changing business and work environment while managing multiple priorities
· Consistently demonstrates honesty and integrity through personal example
· Follows all safety policies and leads by example a safety-first culture
· Emotional intelligence and excellent written and verbal communication skills
· An ability to work independently
· An ability to respond to urgent matters with timely, practical, and clear solutions
· Complies with the company values, code of conduct and policies and regulatory standards