The Otsuka US Legal Team is looking for an experienced Intellectual Property attorney who can be successful within our ethical, fast-paced, adaptive and collaborative culture. This position is located in either Princeton, NJ or Rockville, MD.
The Director, IP Corporate Counsel will bring an advanced understanding of digital therapeutics, the pharmaceutical industry and the intellectual property framework of digital products and the industry. Having several years of applicable experience, the incumbent will manage all aspects of intellectual property estates in Otsuka’s core and developmental therapeutic areas, such as digital health, digital therapeutics, and medical devices, including bioinformatics, medical systems, databases, data search and retrieval, and mobile applications. They will develop, implement and execute IP and legal strategies for their functional area that provide a solid legal position while enabling the business objectives. As a Director within the Legal team, it is expected the incumbent will provide clear and appropriate advice to clients, will work independently and will know when to appropriately escalate complex and unique topics for confirmation of their own well-reasoned positions.
The Director, IP Corporate Counsel will report to the Senior Director, IP Corporate Counsel in the Intellectual Property Practice Group in Legal Affairs. Key responsibilities will be to identify and pursue strategies to capture innovation especially in digital health and medical device areas, including communicating IP guidance and risks to IP, legal and business teams. The attorney in this role will develop and execute far-sighted IP strategy for projects and portfolios worldwide in line with company business goals, and may also work on business development deals.
Director, IP Corporate Counsel Specific Responsibilities:
Create and implement global strategic approaches toward building patent portfolios and providing value to business
Prepare and prosecute patent applications in the US and abroad, including effectively managing outside counsel as needed
Manage IP litigation work by outside counsel in the US and abroad
Provide IP and technical analysis in support of patent litigations
Manage all aspects of intellectual property estates in Otsuka’s core and developmental therapeutic areas, such as digital health, digital therapeutics, and medical devices, including bioinformatics, medical systems, databases, data search and retrieval, and mobile applications
Research, evaluate and monitor patent portfolios of third parties, and develop FTO strategy
Develop and communicate IP guidance to stakeholders across the business, including within Clinical, Medical Affairs, Business Development, Commercial, Marketing, and Legal Affairs
Support intellectual property-related transactional work
Develop an understanding of Otsuka’s technology, scientific and business strategy to develop and prioritize IP strategies and to identify IP-related risks; advise company management and stakeholders on IP strategies and risks
Perform other legal, administrative and corporate duties upon request
Work collaboratively and strategically with members of IP department in related companies
Review and negotiate contracts for collaboration with third parties regarding IP matters
Additional Director Responsibilities (Representative not exhaustive list)
Solutions Analysis: Analyze specific problems and issues to find the best solutions. Solutions could be technical or professional in nature.
Internal Client Relationship Management: Contribute to the management of partnering relationships with internal clients, building effective working relationships and providing high-quality professional services to support in delivering business strategy and plans.
Recommendations: Advise others on how to design new processes and systems that meet professional standards.
Information and Business Advice: Resolve queries from internal or external customers or suppliers by providing information on complex processes and the related policies, referring to others where necessary for interpretation of policy.
Risk Scenario Modeling: Analyze, assess, and quantify the risks associated with products/individual applications/business activities/the market to determine whether any risk is within the agreed risk appetite. Undertake tactical risk modeling.
Decision Quality: Makes good and timely decisions that keep the organization moving forward.
Communicates Effectively: Develops and delivers multi-mode communications that convey a clear understanding of the unique needs of different audiences.
Collaborates: Builds partnerships and works collaboratively with others to meet shared objectives.
Develops Talent: Develops people to meet both their career goals and the organization's goals.
Strategic Mindset: Sees ahead to future possibilities and translates them into breakthrough strategies.
Business Insight: Applies knowledge of business and the marketplace to advance the organization's goals. Monitors business news and market changes for impact on the business or on own expertise area; uses this to shape decisions.
Questions Strategically: Works without supervision and provides technical guidance when required to uncover clients' explicit needs and/or unforeseen opportunities and challenges..
Negotiation: Uses comprehensive knowledge and skills to negotiate independently while providing guidance and training to others
Analyze Alternatives and Recommend Solutions: Works with full competence to analyze potential solutions and create recommendations based on the expected benefits, costs, and overall value of the solution for key stakeholders.
Effectively Presents Solutions: Uses comprehensive knowledge and skills to act independently while guiding and training others to clearly present solutions that link directly to the key objectives and challenges important to the client.
Doctor of Jurisprudence (J.D.) or equivalent degree required
Licensed US Attorney, USPTO Registration Number required
Advanced degree preferred in the life sciences, clinical sciences, bioinformatics engineering; or related discipline
Minimum of 5 years of relevant experience required, with minimum of 3 years as an in-house patent attorney strongly preferred
Experience in the biotech and/or pharmaceutical industry preferred
Minimum of 3 years relevant experience with technology and/or life science industry in IP portfolio development, including preparing patents for electrical engineering, software, mobile computer systems, database architectures, data science, and artificial intelligence and machine learning, preferably in the context of clinical medicine, medical devices, and/or digital health required
Experience with global patent prosecution required.
First-hand experience of patent drafting and patent prosecution required
Experience with re-examination, inter parties reviews proceedings, and litigation preferred
Up to 25% travel is required based upon business needs.
Internal Number: R717
Otsuka Pharmaceutical Co., Ltd. is a global healthcare company with the corporate philosophy: “Otsuka–people creating new products for better health worldwide.” In the U.S., Otsuka is comprised of two companies, Otsuka America Pharmaceutical, Inc., and Otsuka Pharmaceutical Development & Commercialization, Inc., that share a deep commitment to the development and commercialization of innovative products in the spaces of neuroscience, nephrology, and digital medicine
Driven by our purpose to defy limitation, so that others can too, we have an unwavering belief in doing more and transcending expectations. In going above and beyond—under any circumstances—for patients, families, providers, and for each other. It’s this deep-rooted dedication that drives us to uncover answers to complex, underserved medical needs, so that patients can push past the limitations of their disease and achieve more than they thought was possible each and every day.
OPDC and OAPI are indirect subsidiaries of Otsuka Pharmaceutical Company, Ltd., which is a subsidiary of Otsuka Holdings Co., Ltd. headquartered in Tokyo, Japan. The Otsuka group of companies employed 47,000 people worldwide and had consoli...dated sales of approximately USD 13 billion in 2019.
We invite you to explore our open positions for an opportunity to join our 1,700 colleagues in the U.S. whose passion for our mission and pride in our company have earned us certification as a Great Place to Work by the Great Place to Work Institute.