Senior Patent Attorney

About The Role

Novartis Biomedical Research is seeking a Senior Patent Attorney. To perform, manage, direct, and leverage designated patent and related intellectual property (IP) activities within the research and development (R&D) organization of Novartis.

Location: This role will be based out of the Shanghai, China office.

Major Accountabilities:

• Undertakes and leads core and complex patent activities in role including patent drafting and prosecution, conducting patentability and freedom to operate analyses and IP due diligences, as well as advising business partners on how to operate under various agreements, including license and collaboration agreements, sponsored research agreements, clinical trial agreements,  advising business partners on publication strategies, and mitigating global third party risks through strategies which make use of various mechanisms, e.g., oppositions, invalidity proceedings, and other post grant mechanisms available in jurisdictions around the world
• Manages one or more global patent portfolios related to Novartis pipeline products
• Applies deep expertise in Chinese national patent law and practice, preferably also US and/or EP patent law and practice, and other forms of protection relating to exclusivity and makes strategic use of it.
• Coordinates and provides specialist knowledge on one or more specific IP matters or policies to own organization or across IP and Novartis.
• Is a strategic partner to the business and creates and supports implementation of IP strategies to support the business.
• Understands the business of Novartis as part of the healthcare industry, and the role of IP in that business.
• Builds relationships with, and counsels, senior business partners on complex and high value/impact IP-related matters and represents IP on respective boards/meetings providing critical IP perspective.
• Maximizes effective communication with colleagues and leadership in the legal and IP function as well as the R&D organization.
• Contributes to management of budget through careful planning, management of external counsels, and applying cost containment strategies.
• Contributes to, and leads, development and implementation of IP policies, guidelines and objectives.
• Reports technical complaints / adverse events / special case scenarios related to Novartis products within 24 hours of receipt

Key Performance Indicators:

• Significant contribution to patent portfolios and work, and to the department generally
• Proactive issue and risk management.
• Quality of reporting and communication and collaboration.
• High quality patent and IP work.
• Quality and effectiveness of relationships & communications within stakeholders.
• Obtain feedback from business units on quality of legal department services
• Respond to in-house counsel and business unit requests on a timely basis
• Produce high quality legal documents with assistance from in-house counsel
• Provide problem solving, business oriented legal advice; to be assessed with appropriate customer feedback
• Adherence to budget.
• 100% compliance with the legal requirements in the field of work

Essential Requirements

• China’s Patent Agent Qualification required and preferably with China’s Legal Professional Qualification

And

• Bachelor degree in chemistry, biology, or equivalent is required; MS/ PhD, or equivalent, in organic chemistry, molecular biology, pharmaceutical science, or similar is preferred

PLUS

• 3-7+ years exposure to the drug discovery and development processes utilized at pharmaceutical and/or biotechnology companies preferred
• 8+ years of experience as a patent practitioner in a law firm or in the pharmaceutical or biotechnology industry is required, with experiences in advising on cross-border collaboration related IP issues such as Regulation on the Administration of Human Genetic Resources, foreign filing licenses, clinical trial protocol/data disclosure, etc. preferred.
• Expertise in China and PCT law, filing process and prosecution practice; detailed understanding of counterpart U.S. law, European patent law and other major global patent systems is required
• Strong organization and time management skills with flexibility, creativity, resourcefulness to successfully prioritize and manage multiple, competing priorities simultaneously is required
• Strong customer-service experience & focus to build and sustain effective partnerships with key stakeholders and project teams is required
• Well-developed research and critical thinking skills, and sound decision-making abilities, with attention to detail to produce consistently accurate work is required

Desirable Requirements

• Strong scientific background in chemical sciences, biology, in particular organic or pharmaceutical chemistry, molecular biology; preferably including direct lab experience is preferred
• Experience integrating global outlook and management of product lifecycle into decision-making process is preferred

Languages:

• Chinese
• English fluent