Senior Corporate Patent Counsel

Posted 04 Dec 2018

Billerica, Massachusetts - United States

Req Id 185173



A career with EMD Serono is an ongoing journey of discovery: our 51,000 people are shaping how the world lives, works and plays through next generation advancements in healthcare, life science and performance materials. For more than 350 years and across the world we have passionately pursued our curiosity to find novel and vibrant ways of enhancing the lives of others. EMD Serono is a business of Merck KGaA, Darmstadt, Germany.


Your Role:

  • Take care of issues related to the drafting, filing, maintenance, defense and acquisition of Intellectual Properw (I.P.) rights
  • Analyze, describe and present complex IP situation to clients in a clear understandable and convincing manner

     Prepare guidance to the different units within the company or collaboration partners related to Freedom to-Operate (FTO) and commercialization

  • Being part of the interface for EMD Serono Research in Billerica representing the US IP department
  • High knowledge in IP Legal regulations and rules including case law in the US
  • Provide strong advice on 'P issues related to agreements of all kind
  • external communication on a very high level as primary contact to Patent Offices, Courts and Law Firms
  • DevelopmenVAdaptation and Improvement of a Patent Strategy to support FTO for company's projects
  • Sound understanding of patent legislation and relevant case law with special emphasis on US Patent Law
  • Understanding the activities of the team / function / broader business unit I commercial environment
  • Requires conceptual thinking in complex/completely new situations
  • Adaptation, Development and implementation of a tailor made patent strategy for key business areas
  • Act as a member of a site specific local research and development teams
  • Participate in domestic and/or international contract and business development negotiations
  • Strategic handling of the IP portfolio with regard to licensing, enforcement and maintenance
  • IP and technical guidance of a homogenous team of experts;
  • Assist to manage an interdisciplinary team in litigations and other IP related disputes
  • Managing a team of paralegals with regard to filing requirements and other formal patent duties often guided by strict deadlines
  • Management of an interdisciplinary projects and main Interface with Research and Development, Legal, Business Development, Regulatory Affairs
  • Management of the cooperation with international (IP) Law Firms around the globe
  • - Communication In various facets as in negotiations, through presentations

    Qualifications - External

Who You Are:

  • Professional expertise at the level of a university degree in Organic Chemistry, Biology, Medicinal Chemistry and/or Biotechnology
  • Doctorate; PHD in Organic Chemistry, Biology, Medicinal Chemistry or Biotechnology
  • US patent attorney, European Patent Attorney or similar qualification
  • Solid professional skills in leading a patent department or a patent group in a law firm
  • Solid professional skills in managing and handling a complex IP porffolio
  • Strong academic background in Chemistry, mainly Organic Chemistry, Biology, Medicinal Chemistry and/or Biotechnology
  • Expert in US patent law and preferably a US patent attorney

     Professional experience in drafting of patent applications, prosecuting, enforcing those and filing procedures including inhouse management of a IP portfolio with more than 50 patent families

  • knowledge of European patent law and the regulations in other jurisdictions
  • Professionaf experience in an international environment
  • Several years of professional experience in the IP business (> 5 years)
  • Strong mature leadership and influencing skills
  • Fluent In English and preferably one other language (preferably German)

What we offer: With us, there are always opportunities to break new ground. We empower you to fulfil your ambitions, and our diverse businesses offer various career moves to seek new horizons. We trust you with responsibility early on and support you to draw your own career map that is responsive to your aspirations and priorities in life. Join us and bring your curiosity to life!

Curious? Apply and find more information at


The Company is an Equal Employment Opportunity employer. No employee or applicant for employment will be discriminated against on the basis of race, color, religion, age, sex, sexual orientation, national origin, ancestry, disability, military or veteran status, genetic information, gender identity, transgender status, marital status, or any other classification protected by applicable federal, state, or local law. This policy of Equal Employment Opportunity applies to all policies and programs relating to recruitment and hiring, promotion, compensation, benefits, discipline, termination, and all other terms and conditions of employment. Any applicant or employee who believes they have been discriminated against by the Company or anyone acting on behalf of the Company must report any concerns to their Human Resources Business Partner, Legal, or Compliance immediately. The Company will not retaliate against any individual because they made a good faith report of discrimination.

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