Boehringer Ingelheim Vetmedica.Inc.
Counsel Intellectual Property
Job Location: Saint Joseph, MO
Department:
Legal / Legal
Shift:
Full Time
Our Culture - Come Discover Us:
Boehringer Ingelheim is a family-owned company that is in the business of providing our customers with pharmaceutical and animal health products that significantly enhance their health and improve their quality of life. Our most important resource is our committed, creative and determined employees whose energy is focused on discovery, development and delivery of our innovative products to those who need them. The employees of Boehringer Ingelheim are our most important competitive advantage. Our global presence and thinking provides the opportunity for employees to work internationally and on teams, offering them visibility and the ability to influence the direction and outcome of critical projects.
Competitive benefit and compensation programs reflect the Company's high regard for its employees and enhance each person's ability to balance the demands of work and personal responsibilities. Every employee at Boehringer Ingelheim contributes to the company's uncompromising commitment to quality in our products, excellence in our scientific pursuits and high ethical standards of behavior. The diversity of our employees makes it possible for us to craft unique solutions to today's complex business challenges. We are an equal opportunity employer. M/F/D/V.
Job Description
QUALIFICATIONS:
* J.D. and U.S. Patent &Trademark Registration required
* Familiarity with Hatch-Waxman amendments to patent law
* Five or more years at a law firm with an Intellectual Property practice with patent prosecution experience, or five or more years at a pharma company doing patent prosecution
* Experience with pharmaceutical and biologicals clients and FDA and/or USDA licensing regulations
DUTIES & RESPONSIBILITIES:
* Monitor and evaluate the R&D activities in the U.SA. in order to identify subject matter appropriate for patent or trade secret protection on a global basis, and prepare/file and prosecute patent applications arising from R&D activities in the U.S.
* Monitor and assess patent protection in all appropriate countries outside the U.S. for inventions arising from R&D activities in the U.S. in cooperation with the Patent Departments of BI GmbH and BI Vetmedica GmbH
* Prepare/file/prosecute U.S. patent applications protecting inventions arising from R&D activities of BIVI
* Counsel management of the BIVI and BI Vetmedica GmbH on validity, infringement and enforcement of U.S. patents held by third parties and the enforceability of BI patents and provide support to (or manage) any related litigation
* Counsel management of the BIVI on matters relating to market exclusivity/patent term restoration and prepare and file necessary papers with the USPTO to perfect those rights
* Counsel management of BIVI and coordinate with regulatory, if necessary, on matters relating to securing protection of U.S. trademarks/trade names/domain names and to the enforceability thereof
* Negotiate, draft, review and arrange execution of agreements and contracts with third parties dealing with ownership, acquisition and licensing of IP rights
* Analyze third party patent situations and prepare legal opinions to advise U.S. management and the patent departments of BI GmbH and BI Vetmedica GmbH of the infringement risks attendant particular courses of action
* Prepare opinions on patent strategies, including lifecycle management strategies, for projects/products to ensure continuing IP protection and direction, and to identify and communicate to appropriate persons or teams additional growth opportunities
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