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Shionogi Inc. is the U.S. subsidiary of Shionogi & Co., Ltd., a leading Japanese pharmaceutical company with state-of-the-art research capabilities that has provided innovative medicines essential to people's health for over 140 years. Shionogi is one of Japan’s oldest pharmaceutical companies, with a presence in over 10 countries and annual global sales exceeding $3 billion.
In the U.S., Shionogi Inc. develops and commercializes pharmaceutical products that address unmet medical needs in therapeutic areas such as anti-infectives and CNS. Shionogi Inc. has a U.S. employee base of over 250 people and is actively seeking business development opportunities to expand its presence in the U.S.
The Head of IP and Litigation will serve as the leader of this function and will report directly to the EVP, Legal and Compliance in the US. This individual will have overall responsibility for intellectual property as a member of the Legal team, to advise and guide the US organization on intellectual property topics (including patent, trademark, copyright and trade secret protection), and manage a global patent estate. This individual will also provide advice in a matrix function to the parent company with respect to the prosecution and management of the parent company’s IP, with an eye toward optimizing the company’s IP position globally.
The Head of IP and Litigation will be responsible for managing all litigation involving Shionogi Inc., including intellectual property litigation, commercial disputes, employee claims and product liability matters.
RESPONSIBILITIES
Develop and implement strategies that protect the company's intellectual property worldwide and apprise and advise regarding the IP component of company decisions.
Anticipate and articulate intellectual property-related issues for the leadership team, formulate and execute an agreed-upon course of action to address identified issues.
Conduct intellectual property due diligence assessments on business development opportunities, including an assessment of the exclusivity protection for particular products and provide transactional support to the business development group and the US senior leadership team.
Identification, procurement and defense of intellectual property rights in the US while influencing worldwide strategy -- including evaluation of inventions; conducting prior art searches; management of the company's global patent, trademark and copyright filings.
Provide supervision and direction of outside counsel in patent preparation and prosecution.
Provide freedom-to-operate analyses and related risk assessments and legal opinions with appropriate business context; monitor competitive intellectual property.
Lead any company assertion and prepare defense of intellectual property in patent office administrative proceedings and/or actions in U.S. federal district court, or equivalent proceedings in venues outside the U.S. -- including preparation, counsel selection, case assessment, discovery and all stages of adversarial proceedings.
Review publications, presentations, press releases and other materials for intellectual property considerations.
Coordinate with external collaborators on intellectual property matters.
Support contract team as needed by review of intellectual property terms in nondisclosure, research, material transfer, service and other relevant agreements, including those arising in the business development context.
Serve as primary owner of company’s document retention policies and procedures, including providing counseling thereon to U.S. colleagues, as needed.
Litigation responsibilities to include all litigation and disputes involving the company generally, including Hatch-Waxman Paragraph IV litigation, commercial and contractual disputes, employee claims of all types, and other specialized pharmaceutical industry litigation, including false claims act and pricing issues.
Responsibilities to include qualification, selection and procurement of outside counsel, providing case strategy, review of pleadings and documents and managing the litigation budget for each case.
Travel – domestic and international – approximately 10%.
As an independent contributor, will work cross-functionally with individuals and teams.
Decision-making authority is implicit as it pertains to IP and Litigation matters.
REQUIREMENTS
Strong academic background and experience in biochemistry, molecular biology, organic chemistry, formulation technology or other pharmaceutical science.
J.D. from an accredited U.S. law school with admission to at least one state bar.
Registered before the U.S. Patent & Trademark Office.
10+ years of patent law experience, including drafting and prosecuting small molecule patent applications; in-house / pharma industry IP experience preferred.
Relevant experience in litigation cases or managing outside counsel in litigation matters.
Extensive knowledge of global patent law and procedure, including international and foreign patent prosecution procedure, and including experience with patent litigation and administrative patent challenges (US PGR/IPRs, ex-US opposition proceedings, and the like).
Excellent written and oral communication skills and ability to quickly articulate complex issues clearly and succinctly to business-people.
Experienced problem-solver with a mature and professional demeanor, sound judgment and decision-making abilities.
A high degree of self-motivation and initiative, with strong organizational skills, and careful attention to detail.
Ability to handle and prioritize multiple assignments and maintain strict deadlines through effective time management.
Strong situational and self-awareness, including interpersonal skills that are demonstrated by being, direct, and forthright, and serving as a collaborative team member.
Will commute to our US Corporate Headquarters in Florham Park, New Jersey.
To be considered for this position, you must apply and meet the requirements of this opportunity.
We look forward to reviewing your resume & qualifications.
DISCLAIMER
The job description is not designed to cover or contain a comprehensive listing of requirements, duties or responsibilities that are required of the employee. Other requirements, duties and responsibilities may change or be assigned at any time with or without notice.
EEO
Shionogi Inc. is an equal opportunity/affirmative action employer.
All qualified applicants will receive equal consideration for employment opportunities based on valid job requirements without regard to race, color, religion, sex (including pregnancy), sexual orientation, gender identity, marital status, national origin, age, ancestry, citizenship, disability, genetic information, status as a disabled veteran, a recently separated veteran, Active Duty Wartime or Campaign Badge Veterans, and Armed Forces Service Medal Veterans, or any other characteristic protected by applicable law.
It is the policy of Shionogi Inc. to undertake affirmative action in compliance with all federal, state, and local requirements to recruit a diverse pool of applicants and to ensure that our employment practices are, in fact, non-discriminatory.
Internal Number: HEADO01239
About Shionogi Inc.
Shionogi Inc. is the U.S. subsidiary of Shionogi & Co., Ltd., a leading Japanese pharmaceutical company with state-of-the-art research capabilities that has provided innovative medicines essential to people's health for over 140 years. Shionogi is one of Japan’s oldest pharmaceutical companies, with a presence in over 10 countries and annual global sales exceeding $3 billion.
In the U.S., Shionogi Inc. develops and commercializes pharmaceutical products that address unmet medical needs in therapeutic areas such as anti-infectives and CNS. Shionogi Inc. has a U.S. employee base of over 250 people and is actively seeking business development opportunities to expand its presence in the U.S.
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