Senior Patent Officer

Accepting BioReady™: Yes
Category: Legal / Intellectual Property
Location: Vancouver, BC
Posted: July 19, 2021
Closes: August 18, 2021

Key Duties & Responsibilities:

  • Perform due diligence, including competitor analysis, freedom to operate, patent review, technology review and valuation, market analysis, etc.
  • Recommend IP protection strategies, IP licensing strategies, as well as other business strategies to Senior Management. 
  • Draft, prepare and file patent applications.
  • Manage the prosecution of patents from in-licensed and in-house developed technologies, including reviewing and drafting responses to office actions, corresponding with external patent counsel, and strategizing appropriate patenting decisions.
  • Advise on course of action in respect of potential infringement of in-house and in-licensed patents, as required, and liaise with external parties to resolve disputed patent matters.
  • Provide analyses, risk assessment, and interpretation of contractual terms, liabilities, obligations, and regulations. 
  • Research and evaluate new business opportunities and/or new technologies in stem cell research and related fields.
  • Work collaboratively with internal stakeholders to understand company inventions to be filed as patent applications and/or to facilitate their prosecution.
  • Attend internal scientific data presentations with a view to assessing the patentability of new inventions.
  • Other Duties & Responsibilities:
  • Undertake partnering activities with rights holder(s) of technologies relevant to the business of STEMCELL.
  • Establish, manage and maintain relationships with external parties: potential and active business partners; technology transfer offices in major academic institutes worldwide etc.
  • Draft, negotiate and manage various agreements as necessary, including those beyond licenses, such as supply, confidentiality, OEM, etc. 
  • May assist in the management of executed agreements; ensuring all contractual obligations are met in a timely manner. 
  • Assist other departments with various external agreements. 
  • Organize cross-department meetings to facilitate external contract negotiations and co-ordinate internally to implement business decisions. 
  • Represent STEMCELL in conferences and other partnership meetings. 
  • Supervise/mentor junior team members.

Qualifications:

  • Graduate degree in immunology, hematology, molecular biology, biochemistry or a related life science, in a relevant life science with significant experience in research.
  • At least two years experience drafting and filing patent applications, and prosecuting such applications in worldwide patent offices
  • In-depth knowledge of patent regimes in key STEMCELL markets.
  • Significant business development, legal, licensing, and/or patent prosecution experience and/or training (e.g. JD, MBA, CLP designation, or patent agent designation). 
  • Experience in contract negotiation is an asset
  • Experience negotiating IP licensing agreements is preferred.
  • Capacity for critical and creative thinking with attention to detail.
  • Ability to develop and maintain collaborative relationships with internal and external stakeholders.
  • Highly developed project management skills.
  • Excellent communication skills, both oral and written.
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