Director of Intellectual Property

About WhiteCrow

We are global talent research, insight, and sourcing specialists with offices in the UK, USA, Singapore, Malaysia, Hong Kong, Dubai, and India. Our international reach has helped us to understand and penetrate specialist markets at a global level. In addition to this, our service is also extended to complement our client’s in-house talent acquisition teams.

About our client

Our client is a global pharmaceutical leader headquartered in Mumbai, India, with products distributed in over 100 markets. They specialize in pharmaceutical products, including branded and generic formulations, complex generics, biotechnology products, and active pharmaceutical ingredients. Trusted by healthcare professionals and consumers globally, the company holds a strong position in India and the U.S. across multiple therapy areas, including respiratory, cardiovascular, anti-diabetic, anti-infective, gastrointestinal, central nervous system, and women’s health.

Our client operates 15 state-of-the-art manufacturing sites and 7 research centers globally, supported by a dedicated workforce of over 22,000 professionals.

The company is committed to improving patient health outcomes through its subsidiaries, which include Diagnostics, Digital Health, and Manufacturing Solutions.

As a Director of Intellectual Property, you will be responsible for...

• Contributing to the success of the company’s IP strategy by developing and maintaining the company’s patent portfolio.
• Working with Research and Development to produce the most effective U.S. and foreign patent strategies and portfolios for company products and projects.
• Working closely with Research and Development to identify patentable inventions.
• Participating in internal invention disclosure assessments. provide guidance regarding the patentability of inventions under review.
• Preparing and prosecuting high-quality, strategic patents (both utility and design).
• Assigning and efficiently managing work performed by outside law firms. Reviewing applications and prosecution materials prepared by outside counsel.
• Providing technical and legal commentary to ensure overall application quality.
• Working with the IP team to develop and implement patent strategies and processes and working with R&D and other departments to understand business priorities and challenges to incorporate those into a comprehensive IP strategy.
• Supporting/leading in the development of patentability, validity, infringement, freedom-to-operate opinions, and requisite patent searching.
• Monitoring competitor activity, initiating and controlling measures to invalidate third-party patent rights.
• Managing patent families and select patent portfolios on a global basis.
• Educating internal research and development teams about company IP policies and the importance of IP.
• Managing IP budget and set priorities for investment in intellectual property.

What you already have...

• D.degree from an accredited law school.
• Membership in good standing in at least one state bar.
• Registration to practice before the USPTO.
• Advanced Science Degree (Chemistry, Biology or Pharmacy).
• At least 10 years of in-house legal experience and proven track record in IP management at a pharmaceutical company.
• Ideal candidate will also have some experience with devices or with engineering.
• Candidate should demonstrate very deep scientific understanding of chemistry and pharmaceuticals and an ability to rapidly acquire and apply new knowledge.
• Experience with preparation, prosecution, and e-filing of U.S. and foreign patent applications.
• Experience in all aspects of IP counseling, including freedom to operate and validity opinions.
• Strong oral and written communication skills and attention to detail.
• Strong analytical skills.
• Excellent business judgment related to critical IP issues, and strategic thinking capability.
• Ability to be flexible and provide critical and clear IP advice to internal client groups.
• Strong organizational skills and ability to manage numerous projects simultaneously
• The candidate will be located in Somerset, New Jersey.
• Travel is required and the candidate should be prepared to regularly travel to the company’s Research and Development facilities in Florida and the Netherlands.