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Patent Prosecution Counsel

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AbbVie

22d ago

  • Job
    Full-time
    Mid Level
  • Legal
  • Chicago
  • Quick Apply

AI generated summary

  • You need a JD, USPTO registration, 3+ years patent law experience, technical background in pharmaceuticals, strong legal skills, and ability to manage complex projects.
  • You will develop and implement IP strategies, provide legal advice, draft and prosecute patent applications, challenge and defend patents, and conduct due diligence activities.

Requirements

  • JD degree from an accredited law school, state bar admission enabling in-house practice (specific state not required), and registration to practice before the USPTO.
  • 3+ years of experience practicing patent law as an attorney or patent agent at a law firm and/or life sciences company, including substantial U.S. and foreign patent prosecution.
  • Technical background relevant for pharmaceutical patent prosecution, such as:
  • Experience with small molecule and/or biological pharmaceutical discovery & development, and/or
  • Technical degree in relevant field, such as molecular biology, biotechnology, biochemistry, biology, chemistry, chemical engineering, or biomedical engineering.
  • Strong legal, analytical, communication, collaboration, and people skills.
  • Demonstrated ability to manage complex projects to meet deadlines.

Responsibilities

  • Maximize AbbVie’s competitive position through creation and implementation of intellectual property strategies.
  • Provide legal advice and counsel to cross-functional R&D and business teams on a variety of IP-related matters.
  • Draft, file, and prosecute strategically useful patent applications worldwide both directly and through management of outside counsel.
  • Challenge and defend patents in IPR, opposition, interference, and other post-grant proceedings.
  • Conduct prior art searches, analyze third-party patent positions, and conduct due diligence to support business development activities.

FAQs

What are the primary responsibilities of a Patent Prosecution Counsel at AbbVie?

The primary responsibilities of a Patent Prosecution Counsel at AbbVie include developing and implementing intellectual property strategies for AbbVie’s products and product candidates, providing legal advice to cross-functional R&D and business teams, drafting and prosecuting patent applications worldwide, challenging and defending patents in post-grant proceedings, conducting prior art searches, and analyzing third-party patent positions.

What qualifications are required for the Patent Prosecution Counsel position at AbbVie?

To be considered for the Patent Prosecution Counsel position at AbbVie, candidates must have a JD degree from an accredited law school, state bar admission enabling in-house practice, registration to practice before the USPTO, at least 3 years of experience practicing patent law in a law firm or life sciences company, a technical background relevant to pharmaceutical patent prosecution, and strong legal, analytical, communication, collaboration, and project management skills.

Where are the offices located for the Patent Prosecution Counsel position at AbbVie?

The offices for the Patent Prosecution Counsel position at AbbVie are located in the Chicago, San Francisco, or Boston metro areas with a hybrid work model (on site 3+ days/week).

What benefits are offered to employees in the Patent Prosecution Counsel position at AbbVie?

Employees in the Patent Prosecution Counsel position at AbbVie are offered a comprehensive package of benefits including paid time off (vacation, holidays, sick leave), medical/dental/vision insurance, and participation eligibility in short-term and long-term incentive programs.

Science & Healthcare
Industry
10,001+
Employees

Mission & Purpose

AbbVie is a global biopharmaceutical company focused on creating medicines and solutions that put impact first — for patients, communities, and our world. We aim to address complex health issues and enhance people's lives through our core therapeutic areas: immunology, oncology, neuroscience, eye care, aesthetics and other areas of unmet need.