Associate General Counsel, Intellectual Property

Job Locations USA-NY-New York
Posted Date 3 weeks ago(8/30/2021 2:18 PM)
Requisition ID
2021-51607
Category
Professional - Other

Company Overview

At Memorial Sloan Kettering (MSK), we’re not only changing the way we treat cancer, but also the way the world thinks about it. By working together and pushing forward with innovation and discovery, we’re driving excellence and improving outcomes.  We’re treating cancer, one patient at a time. Join us and make a difference every day.

 

MSK will require all new hires, volunteers, and vendors who come onsite to provide proof of COVID-19 vaccination. This is based on the COVID-19 vaccines’ high level of protection and our shared responsibility in protecting our patients.

Job Description

We Are:

The Office of Technology Development’s (OTD’s) mission is to ensure that MSK inventions have the greatest chance of being developed and commercialized – so that these inventions both benefit patients and return the most value to MSK.

  • The Associate General Counsel, Intellectual Property (AGC) plays a major role in furthering this mission by supporting the enforcement and protection of MSK’s intellectual property interests and legal oversight of important transactions with industry and academia. The AGC reports directly to the General Counsel (GC) and will be on the Legal Leadership Team.
  • Additionally, the AGC will have a dotted reporting line to the Vice President, Technology Development, in the Office of Technology Development (OTD). OTD is the department at MSK responsible for identifying, evaluating, protecting, developing, managing and commercializing the institution’s innovations.

The Associate General Counsel (AGC) responsibilities include:

Intellectual Property Protection

  • In consultation with licensees and/or external counsel, assist in the enforcement of MSK IP, including assisting with all aspects of patent litigation such as discovery, strategy, mediation, and trial.
  • In consultation with external counsel, the GC, and the licensing staff of OTD, assist with defense against challenges to MSK intellectual property.
  • Provide counsel to OTD staff regarding patent strategy and patent prosecution process, advise on inventorship analysis and ownership issues.
  • Serve as a resource for OTD contract attorneys and paralegals, especially with regard to IP-related provisions in research agreements with industry and academia.
  • Coordinate outside patent firms responsible for patent prosecution.
  • Allocate and approve IP-related legal spend.

Transactions

  • Work with licensing managers and outside counsel to negotiate legal aspects of important revenue-generating transactions with industrial partners, academic centers and startup companies.
  • Coordinate with partner academic centers on inter-institutional collaborations and negotiate agreements for shared IP with other institutions.

You Have:

  • JD required, advanced degree in life sciences, chemistry, or equivalent desirable/preferred.
  • Substantial experience working in a university or academic medical center, law firm, or in-house legal department (some in-house experience preferred).
  • Familiarity with intellectual property concepts and federal laws and regulations as well as NIH guidelines pertaining to academic technology transfer.
  • Experience with complex intellectual property agreements.
  • Experience structuring, drafting and negotiating intellectual property and commercial agreements in a bio-medical and scientific environment.
  • Excellent interpersonal skills and positive attitude.
  • Enjoys working collaboratively in a team environment.
  • Excellent verbal and written communication skills along with strong analytical and organizational abilities.
  • Comfortable with scientific concepts and terminology.
  • Self- motivated with strong administrative and problem-solving skills.
  • Able to exercise mature judgment and tact, prioritize and meet deadlines, and adhere to MSK policies, raising questions when necessary.

 #LI-POST

Closing

MSK is an equal opportunity and affirmative action employer committed to diversity and inclusion in all aspects of recruiting and employment. All qualified individuals are encouraged to apply and will receive consideration without regard to race, color, gender, gender identity or expression, sexual orientation, national origin, age, religion, creed, disability, veteran status or any other factor which cannot lawfully be used as a basis for an employment decision.  

 

Federal law requires employers to provide reasonable accommodation to qualified individuals with disabilities. Please tell us if you require a reasonable accommodation to apply for a job or to perform your job. Examples of reasonable accommodation include making a change to the application process or work procedures, providing documents in an alternate format, using a sign language interpreter, or using specialized equipment.

 

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