San Diego, CA, United States
Sep 22, 2022
Title: Patent Attorney / Patent Agent
Genomatica develops commercial biobased processes to make widely-used chemicals that enable better, more sustainable everyday products. That enables our partners and leading brands to offer better food packaging, home and personal care products, nutraceuticals, auto parts, clothing, carpets, and more.
We’ve commercialized processes for bio-BDO (for plastics) and for biobased butylene glycol (for cosmetics); and our technology drives the world’s first commercial-scale biobased plant for a major intermediate chemical. We’re working on polyamide intermediates (nylon) and nutraceuticals and other home and personal care products; and we’re helping numerous companies with their bioprocesses. We have more on the way.
Genomatica is seeking a biotechnology/chemical Patent Attorney or Patent Agent who thrives in a fast-paced, cutting-edge, innovative yet collaborative R&D and business development environment.
Primary responsibilities include (a) managing part of Genomatica’s global patent portfolio, (b) managing new patent preparation and creating a related global IP strategy, and (c) providing guidance on intellectual property related issues.
The successful candidate will have demonstrated: expertise in relevant legal, technical and, preferably, business areas; managing and building a biotechnology and commercial product patent portfolio; drafting and prosecuting patent applications globally; providing IP guidance to R&D, executive and commercial teams; experience in spotting strengths and weaknesses in patents; effective collaboration with external R&D and business partners; independent and creative thought; and ability to multi-task on projects across diverse technical areas and legal issues. Preferably the ideal candidate has participated in and managed patent challenges and defenses and has supported technology-related contract negotiations.
Essential Functions and Responsibilities include the following. Other duties may be assigned. To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
• Manage all aspects of a portion of Genomatica’s patent portfolio and one or more technology areas, working with the Senior Director of IP and and managing outside patent counsel
• Identify, assess, and make recommendation on inventions
• Create patent strategies consistent with Business goals, R&D status, partner’s input and competitive space
• Manage preparation and filing of new applications
• Provide third party IP analyses, working with R&D, outside counsel, and search services
• Provide guidance to R&D and Senior Management on third party IP
• Perform and review patent and scientific literature searching as needed
• Manage challenges to third party patents or defenses to the managed patent portfolio
• Support other actions related to the patent portfolio being managed and assigned technology areas
• Represent Genomatica on external collaborator IP committees
• Present IP best practices training to R&D, Business Development and Senior Management
• Support business, R&D and commercial teams as needed in activities and transactions involving technology or IP related to the patent portfolio being managed and assigned technology areas
Qualifications & Experience
The requirements listed below are representative of the knowledge, skill, and/or ability required in order satisfactorily perform in this role.
• Recognized to practice before the USPTO.
• At least a BS, preferably Ph.D., in life sciences, chemistry or related technical field.
• Preferably a Juris Doctorate from an accredited law school and admitted to a US state bar in good standing, and more preferably admitted to practice in California.
• At least 7+ years in a law firm and/or company drafting, reviewing and editing patent applications, managing a patent portfolio, guiding R&D in IP issues, leading patent challenges, generating FTO analyses, and providing a range of other IP-related services in the biotechnology or chemical industry, including advising clients on related legal and business issues and risks.
• Excellent and demonstrated knowledge at least of patent laws and patent procurement practices of the U.S. and other major countries, of best practices and considerations for patent drafting, of patent opposition practices and grounds, of considerations for patent value and issues assessment, of law firm services and billing practices, of best practices for IP protection and exploitation, of patent searching, of basic principles and issues of patent and technology licensing and commercial use of inventions, of drafting arguments and counterarguments related to patent strengths and weakness, invalidity, infringement, and other IP issues.
• Ability to respond sensibly and rapidly to urgent and demanding situations.
• Excellent, demonstrated oral and written communication and presentation skills, preferably experienced directly in drafting arguments and counterarguments related to patent strengths and weakness, invalidity, infringement, and other IP issues.
• Excellent, demonstrated business acumen and ability to deliver solid, concise, solution-oriented, win-win approaches and advice, in the context of evolving competitive, business and/or R&D scenarios.
• Proactively develop and/or implement approaches to enhance efficiency and cost-savings related to IP administrative matters.
Work Environment/ Physical Demands
The work environment and physical demands described here are representative of those an employee encounters while performing the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
This position involves working in an office setting. As such this position requires the ability to use computers and office equipment. The position requires communication with other individuals, inside and outside the company, through a variety of methods. There are no specific lifting requirements. This position may require the ability to work outside normal business hours on an as needed basis. Ability to travel for business meetings, conferences, and partnered meetings may be necessary.
Genomatica is committed to providing exciting career opportunities in an environment that values trust, respect, openness, teamwork, creativity, enthusiasm, and diligence. We strive to create a culture that enables and encourages everyone to bring their whole selves to work. We are committed to be a company where everyone feels they have equal opportunity to reach their potential. Everyone is accepted and appreciated for who they are and what they bring to Genomatica.
We promote the continued development of an inclusive environment that values diversity through Geno4All, our employee led Diversity, Equity, and Inclusion (DEI) committee. We are looking for innovative, highly motivated, and collaborative people who enjoy the challenges and rewards of a company devoted to commercializing cutting-edge sustainable technology.
Check us out on our LinkedIn Life page. Genomatica is an equal opportunity employer.
Qualified applicants will be considered without regard to race, color, religion, creed, sex, sexual orientation, gender identity, marital status, national origin, age, veteran status, disability or any other characteristic protected by law.