Intellectual Property Leader

Intellectual Property Leader

Sanofi

Antony, France

We are looking for a Senior IP leader to support the activities of this future new company (“PLUTON”).

This recruitment is in a project mode and is subject to social and legal process applicable to this new organization.

The PLUTON IP Leader will be an experienced patent attorney responsible for small molecule active ingredients. The IP Leader will be part of the legal team dedicated to all aspects of intellectual property protection for all projects and activities across PLUTON's global business units. He/she ensures compliance with PLUTON’s policies and applicable IP laws and regulations.

The IP Leader will deal with legal issues related to and advise on a wide range of intellectual property matters including know-how, patents, trade secrets, trademarks, domain names, and copyrights, with a strong focus on patent preparation and prosecution, worldwide patent portfolio management, overall IP strategy, patentability, and freedom-to-operate.

The position requires expertise in the various domains of IP, autonomous profile to prepare the coordination of such activities in 5 European countries (France, Germany, Hungary, Italy, United Kingdom) where Pluton’s manufacturing sites are located, in the US and in Japan for distribution and commercial activities, to identify and set up the interface with external counsels.

The position reports directly to the General Counsel.

Principal Accountabilities:

  • Contribution to prepare the supervision of core patent tasks; e.g.:
    • development and execution of business-focused patent strategies;
    • evaluation of inventions to determine patentability of IP related to internal and/or external projects.
  • Jointly with the support of outside counsel:
    • the preparation, filing and prosecution of EP and foreign patent applications;
    • searches and opinions on validity, non-infringement and patent avoidance of third-party patents
  • Counseling: interaction with and proactive counseling of PLUTON management and clients, mainly in France/Europe/the US, defining creative and ambitious business strategies in intellectual property-related matters and ensuring their implementation. Working collaboratively with all the functions of PLUTON and providing solution-oriented IP legal services;
  • Patent: Pre-litigation and litigation;
  • identify and address FTO issues and work collaboratively with outside counsel regarding all aspect of post-filing legal aspects (oppositions, IPR, pre-litigations and litigations). Driving creation of mitigation strategies for identified risks;
  • Identify and address proactively potential infringing activities and work collaboratively with the General Counsel. Drive litigations;
  • Prepare, advise and counsel on various IP matters involving copyrights, trademarks, trade secrets domain names, copyrights with input from local counsel as needed, including but not limited to evaluation of registrability, validity, enforceability and litigation the General Counsel;
  • Contribute to draft critical and complex agreements that are well structured and organized. revise and improve existing templates; instruct others on drafting persuasive legal documents for the General Counsel;
  • Prepare insightful and easy to understand presentations and training to other members of the legal team and business teams on relevant topics to drive continuous improvement within both the legal team and the business more broadly.

Qualifications & Work Experience:

  • A minimum of 10 years of patent law experience gained in-house and/or in a law firm;
  • Position requires an undergraduate degree in chemistry or biochemistry, or in a biologic science with demonstrated experience in synthetic chemistry; an advanced degree (MS, PhD) is preferred;
  • A Juris Doctor (JD) or a Master's degree in intellectual property law;
  • USPTO patent agent license or passed the EPO European Qualifying Examination is required;
  • Experience to work in project mode;
  • Experience in handling EPO Oppositions, and litigations in one or more European countries;
  • Confirmed experience developing and implementing IP strategies and policies for API in a pharmaceutical setting; specific experience with emerging therapeutic platforms;
  • Confirmed experience in assessing strategic issues: identifying risks and opportunities associated with third party IP portfolios or activities; driving risk-mitigation strategic plans, in collaboration with litigation partners; providing strategic IP guidance and opinions in support of collaboration and licensing, M&A transactions;
  • Sound knowledge in trademarks, domain names, copyrights: evaluation of registrability, validity, enforceability and litigation;
  • Microsoft Office (Word, Excel, PowerPoint, Outlook, Teams) proficiency;
  • Fluent in French, English.

Key Competencies:

  • High standards of ethics and integrity;
  • Excellent interpersonal, communication (verbal and written), problem-solving, negotiation skills;
  • Clear communication and active listening skills;
  • Solid business judgment with a record of strategic and critical thinking;
  • Adaptable, flexible, open to finding unique solutions to overcome business challenges;
  • Self-motivated, highly responsive, team player with the ability to drive projects, identify and resolve issues;
  • Keeps informed of new laws and regulations;
  • Strong organizational skills and ability to multi-task.

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© EuroJobsites 2021

EuroJobsites is a registered company number: 4694396 VAT number: GB 880 9055 04

Registered address: EuroJobsites Ltd, Unit 8, Kingsmill Business Park, Kingston Upon Thames, London, KT1 3GZ, United Kingdom

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