Counsel, Intellectual Property

Career Level: Manager (Manager/Supervisor of Staff) Our CultureAt Boehringer Ingelheim, we deliver Value through Innovation by living our fundamental principles of Lead & Learn. We have high expectations for our employees. We require employees at all levels of the organization to take initiative, stay connected, grow together, and achieve outstanding results. To enable high performance, we provide opportunities for personal growth, a collaborative and inclusive work environment, and exceptional employee benefits. We reward high achievement with recognition, opportunities and competitive pay. We hold ourselves to the highest standard of excellence and count on each other to go the extra mile in everything we do. Counsel, Intellectual Property REQUIREMENTS: J.D. and U.S. Patent & Trademark Registration required.   Familiarity with Hatch-Waxman amendments to patent and FDA law.   Three or more years at a law firm with an Intellectual Property practice with patent prosecution experience, or three or more years at a pharmaceutical company doing patent prosecution.   Experience with pharmaceutical clients and FDA regulations. DUTIES AND RESPONSIBILITIES: Monitor and evaluate the R&D+M 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+M activities in the U.S.   Monitor and assess patent protection in all appropriate countries outside the U.S. for inventions arising from R&D+M activities in the U.S. in cooperation with the Patent Departments of BI GmbH and BI Pharma GmbH & Co. KG.   Prepare/file/prosecute U.S. patent applications protecting inventions arising from R&D+M activities of all BI companies outside the U.S.   Counsel management of the BI companies in the U.S. and BI 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 BI companies in the U.S. and BI GmbH on matters relating to market exclusivity/patent term restoration and prepare and file necessary papers with the FDA to perfect those rights.   Counsel management of BI companies in the U.S. 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 Pharma GmbH & Co. KG 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.   Corporate Site