Intellectual Property/Patent Attorney

Roche Holding AG; Pleasanton (CA); On-site; USD 187,000 - 347,000; Full time

Job summary

Roche Diagnostics in Pleasanton, CA seeks a patent professional to manage and expand a global patent portfolio and ensure freedom-to-operate for diagnostic assays and sequencing technologies. The role leads on projects to bring molecular diagnostics to market and conduct due diligence and transactional support with outside counsel.

You will counsel stakeholders across R&D, manufacturing, partnering, and lifecycle management, delivering timely IP strategies and opinions.

Qualifications

• 7+ years of experience in patent prosecution and counseling in a corporate setting and/or law firm.
• Registered US patent agent or attorney qualification required; for attorney applicants, you must be a member in good standing of at least one state bar
• Advanced Degree or equivalent experience in Molecular Biology, Biology, Biochemistry, or Chemistry
• Experience in patenting nucleic acid detection methods and nucleic acid chemistry, and preferably, next-generation nucleic acid sequencing methods and reagents, protein engineering
• Contract and transactional experience is desirable, but not required
• Some travel required

Responsibilities

• Render legal opinions with respect to patentability, validity, and freedom-to-operate in connection with product development efforts
• Be responsible for a substantial worldwide patent portfolio and perform patent prosecution work directly and/or in collaboration with outside counsel
• Align the patent portfolio with short- and long-term business needs and priorities by identifying and capturing patenting opportunities that arise in connection with company R&D efforts
• Apply knowledge of patent trends and case law developments, in combination with technical understanding, to devise patent strategies and advise stakeholders accordingly
• Assist with and/or conduct due diligence assessments and provide counseling based on these assessments (including freedom-to-operate, infringement and validity analyses), evaluate associated risks, and develop risk mitigation strategies
• Support a variety of intellectual property-related contracts and relationships with third parties (such as MTAs, CDAs, research collaborations, licensing agreements, acquisition and litigation activities, and marketing efforts) through collaborations with transactional attorneys and licensing colleagues
• Deliver results on-time, on-target and within-budget according to team goals

Skills

Patent prosecution

Counseling

Molecular biology

Biochemistry

Chemistry

Regulatory knowledge

Education

Advanced degree in Molecular Biology/biology/biochemistry/chemistry

Job description

At Roche you can show up as yourself, embraced for the unique qualities you bring. Our culture encourages personal expression, open dialogue, and genuine connections, where you are valued, accepted and respected for who you are, allowing you to thrive both personally and professionally. This is how we aim to prevent, stop and cure diseases and ensure everyone has access to healthcare today and for generations to come. Join Roche, where every voice matters.

The Position

As a patent professional at Roche Diagnostics, you will be in charge of handling the intellectual property aspects of technologies making an impact on patients’ everyday lives.

As a valued team member you will help bring new diagnostic testing capabilities to market by serving as a functional lead on teams that are working to create, develop and improve molecular diagnostic assays and testing platforms, as well as nucleic acid sequencing technologies and systems. In this role, you will manage and expand a patent portfolio and ensure freedom-to-operate for diagnostic assays and sequencing technologies and the corresponding workflows implemented on automated systems.

The Opportunity

Provide clear and informed counseling to stakeholders engaged in research & development, manufacturing, business development/partnering, portfolio and lifecycle management, and commercialization activities.

• Render legal opinions with respect to patentability, validity, and freedom-to-operate in connection with product development efforts
• Be responsible for a substantial worldwide patent portfolio and perform patent prosecution work directly and/or in collaboration with outside counsel
• Align the patent portfolio with short- and long-term business needs and priorities by identifying and capturing patenting opportunities that arise in connection with company R&D efforts
• Apply knowledge of patent trends and case law developments, in combination with technical understanding, to devise patent strategies and advise stakeholders accordingly
• Assist with and/or conduct due diligence assessments and provide counseling based on these assessments (including freedom-to-operate, infringement and validity analyses), evaluate associated risks, and develop risk mitigation strategies
• Support a variety of intellectual property-related contracts and relationships with third parties (such as MTAs, CDAs, research collaborations, licensing agreements, acquisition and litigation activities, and marketing efforts) through collaborations with transactional attorneys and licensing colleagues
• Deliver results on-time, on-target and within-budget according to team goals

Who You Are

• 7+ years of experience in patent prosecution and counseling in a corporate setting and/or law firm
• Registered US patent agent or attorney qualification required; for attorney applicants, you must be a member in good standing of at least one state bar
• Advanced Degree or equivalent experience in Molecular Biology, Biology, Biochemistry, or Chemistry
• Experience in patenting nucleic acid detection methods and nucleic acid chemistry, and preferably, next-generation nucleic acid sequencing methods and reagents, protein engineering
• Contract and transactional experience is desirable, but not required
• Some travel required

Important Stakeholders/ Interactions

• Assays & Reagents IP Subteam Lead, Molecular Customer Area
• Systems IP Subteam Lead, Molecular Customer Area
• Head of IP, Molecular Customer Area
• Head of IP, Pathology Customer Area
• Head of IP, Roche Diagnostics
• Business and Project Teams
• Members of Research & Development across Roche Diagnostics
• Members of the Molecular IP team and of local and global supporting functionsacross the Roche Diagnostics IP Group
• Patent and Trademark Office

Position based in Pleasanton, CA or Santa Clara, CA; fully remote position is not possible

Relocation benefits are not available for this position.

The expected salary range for this position based on the primary location of California is$186,800 to $346,800. Actual pay will be determined based on experience, qualifications, geographic location, and other job-related factors permitted by law. A discretionary annual bonus may be available based on individual and Company performance. This position also qualifies for the benefits detailed at the link provided below.

Benefits

Who we are

A healthier future drives us to innovate. Together, more than 100’000 employees across the globe are dedicated to advance science, ensuring everyone has access to healthcare today and for generations to come. Our efforts result in more than 26 million people treated with our medicines and over 30 billion tests conducted using our Diagnostics products. We empower each other to explore new possibilities, foster creativity, and keep our ambitions high, so we can deliver life-changing healthcare solutions that make a global impact.

Let’s build a healthier future, together.

Roche is an equal opportunity employer. It is our policy and practice to employ, promote, and otherwise treat any and all employees and applicants on the basis of merit, qualifications, and competence. The company's policy prohibits unlawful discrimination, including but not limited to, discrimination on the basis of Protected Veteran status, individuals with disabilities status, and consistent with all federal, state, or local laws.

If you have a disability and need an accommodation in relation to the online application process, please contact us by completing this form Accommodations for Applicants.