2018-02-18

Patent Counsel
Job Opportunity at Spark Therapeutics, Inc

Posted on Feb 18

http://www.sparktx.com    215-220-9300

Location: Philadelphia, PA
Job Type: Full Time
Job ID: W4150580

As a key member of the legal team, Patent Counsel will work closely with Spark’s in-house and external patent attorneys to evaluate and protect Spark’s innovations in the field of gene therapy, establish and protect the Company’s commercial brands, and provide business-focused legal advice to key stakeholders in support of the Company’s mission and values.
 
Responsibilities 
Prepare and prosecute domestic and foreign patent applications in the field of gene therapy.
Work closely with scientific and business colleagues to identify and protect new IP opportunities, develop strategies and manage third party risks, including conducting freedom-to-operate and invalidity investigations and providing timely, business-focused advice on the basis of such investigations.
Perform transactional work, including negotiating and drafting confidentiality, material transfer, sponsored research agreements and licensing agreements.
Conduct due diligence investigations in support of business development activities, and assist with contract negotiations.
Manage outside counsel and external partnerships.
Monitor and advise on competitive intelligence issues.
Assist with trademark and other legal matters as-needed.

RESPONSIBILITIES:
50%               
  • Draft and prosecute patent applications before the US and foreign patent offices, including conduct strategic prior art analyses on new inventions and work closely with outside counsel during all phases of the patenting process.
20%               
  • Conduct due diligence, freedom-to-operate and general IP landscape reviews and report key findings to internal stakeholders.
15%               
  • Meet regularly with Spark R&D, technical operations and business development teams to provide IP and other legal support.
5% 
  • Assist with transactional work as needed, including draft confidentiality, material transfer, research, license and other agreements.
5% 
  • Work with outside counsel on post-grant matters, including IPR and other administrative proceedings, provide litigation support, and prepare patent term extension applications.
5% 
  • Assist with trademark matters, including meet with commercial operations teams and work with outside counsel on clearance searches and securing worldwide registrations on commercially valuable marks.

QUALIFICATIONS:
  • Strong analytical skills required in order to understand the scope of new inventions and the state of the art, in order to effectively work with Spark scientists and external counsel to secure strong patent protection on Spark technologies. Must be able to effectively communicate key legal principles to internal stakeholders.

REQUIREMENTS:
  • Licensed in one or more jurisdictions and admitted to practice before the U.S. Patent and Trademark Office (USPTO).
  • Generally has a minimum of 10 years experience drafting and prosecuting patent applications in the chemical and/or biotechnology arts (either as a patent agent or lawyer).
  • Strong written and verbal communication skills, interpersonal skills, management skills, and a strong work ethic.
  • Advanced scientific degree preferred but not required.

WHO WE ARE:
 
Transforming Patient’s Lives. Spark Therapeutics is a pioneering gene therapy leader transforming the lives of patients suffering from debilitating genetic diseases by developing one-time, life-altering treatments. We are embarking on our goal to deliver the first approved gene therapy product in the US for genetic blinding conditions and have a product pipeline addressing other unmet rare genetic diseases. We have an entrepreneurial culture and are looking for talented and passionate professionals who are committed and motivated to making a difference in the lives of our patients. If you share our passion for excellence and are looking for a dynamic work environment that fosters creativity, scientific innovation and team collaboration, you may be a great fit for our team.
























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