Patent Counsel, Molecular Diagnostics & Nucleic Acids

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

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.