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Corporate Counsel (IP, Biotech Patent Counsel)

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Pearl River, NY
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Org Marketing Statement
All over the world, Pfizer colleagues are working together to positively impact health for everyone, everywhere. Each position at Pfizer touches and contributes to the success of our business and our world. That’s why, as one of the global leaders in the biopharmaceutical industry, Pfizer is committed to seeking out inspired new talent who share our core values and mission of making the world a healthier place.
Role Description
The Corporate Counsel will provide IP support in the biotechnology area for the
Oncology Research Unit (ORU) located at Pfizer's R&D facility in Pearl River, NY. In general, the Corporate Counsel will be assigned to various biologic research and development projects and will have primary responsibility for counseling, filing and prosecuting patent applications, conducting freedom-to-operate evaluations for those projects and preparing relevant FTO memorandum, and will support patent due diligence assessments for licensing and acquisitions.
Serve as primary patent attorney for one or more oncology research and development and/or commercial projects
Counsel R&D project teams on patent strategy taking into account relevant obligations under license agreements and third-party patent issues
Identify research inventions that may be subject of patent applications
Prepare patent applications and prosecute patent applications world-wide
Analyze third-party patents and prepare infringement, validity, and freedom-to-operate opinions as necessary
Work with Business Development and R&D groups to procure rights to biotechnology needed for Pfizer's business, including primary responsibility for patent due diligence reviews
Manage licensed-in filings from universities and companies-coordinate with licensor's attorneys to secure patents that will aid Pfizer's business
Lead and develop patent strategies for clients on how they can develop an area,
strengthen patents to support products and address any third-party patent issues
Assist in management of the oncology patent portfolio(s); review portfolios and recommend retention, abandonments or cutbacks and provide rationale for the same
Ensure cross-Research Unit issues are addressed and patent strategy is appropriately coordinated with other patent counsel, e.g., common receptor targets or chemical matter
Maintain active dialogue with R&D and patent colleagues in the Research Unit and ensure consistency in legal advice provided
Partner with appropriate Business Unit Patent support to ensure that strategies align with business objectives
Maintain awareness of licensing activities within the Oncology Research Unit and advise on these matters as needed
Provide loss of exclusivity assessments for projects and conduct lifecycle planning in areas of responsibility
Maintain awareness of patent litigation issues in the Research Unit in areas of responsibility
Review and provide input on patent matters for agreements, e.g., material transfer agreements, consulting agreements, confidential disclosure agreements
Review internal and external research publications to ensure Pfizer's proprietary interests are adequately protected prior to disclosure
The candidate must have the following qualifications, skills and attributes:
A law degree (J.D. from an ABA-accredited law school), be a member in good standing of a state bar, and be registered to practice before the U.S. Patent and Trademark Office.
Bachelor's degree in a relevant scientific discipline (e.g., Biology, Biochemistry, Molecular Biology). An advanced degree is strongly preferable but not required.
Minimum of 5 years biotechnology legal experience gained in a law firm or corporate setting
Experience with preparation and prosecution of patents (U.S. and foreign); preparation of infringement, validity, freedom-to-operate opinions and client counseling for biotechnology and biopharmaceutical areas
Experience providing active counseling on issues relating to patentability and freedom-to-operate for research, development and commercial projects
Proven ability to cultivate strong client relationships and successfully influence leadership in a fast paced, innovative business climate
Proven ability to proactively identify and analyze potential legal issues and develop creative and business focused legal advice and solutions
An understanding of legal and regulatory frameworks governing the development and approval of new drugs
Excellent oral and written communication skills, eye for detail combined with pragmatism/sound judgment in decision making.
Ability to collaborate with people from diverse backgrounds e.g., staff scientists, senior attorneys, directors, Vice Presidents, etc.
Team-oriented self-starter with strong communication, analytical and organizational skills, and ability to work under short deadlines
Equal Employment Opportunity
Pfizer is committed to equal opportunity in the terms and conditions of employment for all employees and job applicants without regard to race, color, religion, sex, sexual orientation, age, gender identity or gender expression, national origin, disability or veteran status. Pfizer also complies with all applicable national, state and local laws governing nondiscrimination in employment as well as employment eligibility verification requirements of the Immigration and Nationality Act. All applicants must have authorization to work for Pfizer in the U.S. In certain circumstances it may be advantageous to Pfizer to support the application(s) for temporary visa classification and/or sponsor applications for permanent residence so that a foreign national colleague can accept or remain in a work assignment in the U. S. For certain classes of temporary visas, the resulting work authorization may be specific to Pfizer and the specific job and/or work site. Pfizer may at its business discretion decide to or refrain from obtaining, maintaining and/or extending the temporary visa status and/or sponsoring a colleague for permanent residency and /or employment eligibility, considering factors such as availability of qualified U.S. workers and the colleague's long-term prospects for securing lawful permanent residence, among other reasons. Employment applicants requiring immigration sponsorship must disclose, when initial application for employment is made, whether or not they are legally authorized to work for Pfizer in the U.S. and, if so, whether that authorization permits them to work in the job they seek. In no case should Pfizer's support of a colleague's temporary visa application or sponsorship of a colleague for permanent residence be construed to guarantee success of that application or amend or otherwise invalidate the at-will employment relationship between the colleague and Pfizer.

Company info

Pfizer Inc
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Company Profile
Pfizer Inc: Evolving to meet the needs of a changing society Since Pfizer was founded by cousins Charles Pfizer and Charles Erhart in 1849, our pharmaceutical company has remained dedicated to discovering and developing new, and better, ways to prevent and treat disease and improve health and well being for people around the world. From the miracle of penicillin to Pfizer Helpful Answers, which helps people without prescription coverage maintain access to important medications, to our medicine safety website, we focus on meeting the world's diverse health needs. We invite you to explore our rich history and see how we have continually evolved our company to keep pace with the needs and expectations of our stakeholders and society as a whole.