Surface Oncology is seeking an Intellectual Property Counsel to join its growing Legal team. Reporting to the Director, IP, the IP Counsel will support a broad range of R&D IP efforts. The IP Counsel will work closely with the R&D teams and manage global patent preparation & prosecution matters to build and maintain a strong intellectual property portfolio in support of the company’s development and commercialization efforts. The successful candidate must be adept at counseling and serving as a trusted advisor to senior scientists and business leaders.
In addition, the successful candidate will provide support to diligence efforts and patent challenges as needed. Substantial patent drafting and prosecution experience in the fields of therapeutic antibodies, immunotherapy and oncology fields is required, and meaningful related research or technical experience is preferred.
- Contribute to the growth and management of Surface’s internal patent preparation and prosecution capabilities, including developing procedures and best practices.
- Prepare patent applications for filing by outside counsel and directly with the USPTO.
- Manage a segment of Surface’s intellectual property portfolio.
- Establish strong, collaborative relationships with R&D teams through serving as a practical and proactive advisor and thought-partner on a range of IP-related matters.
- Identify patentable inventions through regular and frequent interactions with R&D project teams.
- Develop and implement strategies to protect Surface’s intellectual property assets.
- Analyze relevant third-party IP and advise on potential pathways to help manage risks.
- Instruct and collaborate with outside counsel in prosecuting worldwide patent applications, conducting patentability and freedom to operate assessments, and managing IP disputes.
- Support the provision of patentability and FTO opinions for R&D pipeline programs and business development opportunities.
- Review proposed publications and presentations for potential impact on patent portfolio.
- Review and support negotiation of IP provisions in contracts, including research, collaboration and licensing agreements.
- Educate and advise colleagues on global intellectual property issues.
EDUCATION AND EXPERIENCE:
- J.D. or equivalent, registered patent attorney, and 5+ years post-law school experience.
- Ph.D. or advanced scientific degree in a relevant biological science (e.g., Molecular Biology, Immunology or Biology) preferred.
- IP experience with therapeutic antibodies and immunotherapies a plus.
- IP practice experience in both a law firm and a bio/pharmaceutical corporate setting preferred.
- Ability to work collaboratively across the Legal team and R&D organization, and successfully build relationships with and manage outside counsel.
- Excellent interpersonal, decision-making and communications skills.
- Ability to manage multiple competing demands and prioritize effectively.
- Demonstrated experience in client counseling and a client service focus.
- Entrepreneurial, self-starter and highly independent.
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