Director, Counsel - Intellectual Property

Sumitomo Pharma
Montgomery, AL
Sumitomo Pharma Co., Ltd. is a global pharmaceutical company based in Japan with key operations in the U.S. (Sumitomo Pharma America, Inc.), Canada (Sumitomo Pharma Canada, Inc.) and Europe (Sumitomo Pharma Switzerland GmbH) focused on addressing patient needs in oncology, urology, women's health, rare diseases, psychiatry & neurology, and cell & gene therapies. With several marketed products in the U.S., Canada, and Europe, and a diverse pipeline of early- to late-stage assets, we aim to accelerate discovery, research, and development to bring novel therapies to patients sooner. For more information on SMPA, visit our website ( or follow us on LinkedIn ( . **Job Overview** We are currently seeking a dynamic, highly motivated and experienced individual for the position of **Director** , **Corporate Counsel, IP.** **Job Duties and Responsibilities** + In collaboration with outside counsel, draft, prosecute and manage worldwide patent portfolios related to small molecules and biologics. + Advise on portfolio exclusivity positions from patent and regulatory law considerations. + Support global IP litigations including US Hatch-Waxman litigation, IPR, EU national litigation, EP opposition, and other IP-related disputes. + Work closely with R&D teams to identify and protect new intellectual property; counsel and educate scientists and product development teams on intellectual property matters. + Review and analyze third-party intellectual property to ensure patentability and freedom to operate, identify any potential issues and advise project teams. + Support business development activities with active participation in global due diligence teams. Work collaboratively with internal stakeholders, and internal and external counsels to proactively support development and commercial products and business goals. + Review abstracts, manuscripts, posters, and other information intended for public disclosure for possible IP concerns. + Manage trademarks and domain names, address copyright questions and issues. + Provide transactional IP support for various types of agreements including asset transfer agreements, licensing agreements, SRA, MTA, CDA, etc. + Occasional travel may be required within the United States and internationally (e.g., to Japan & Europe). **Key Core Competencies** + Ability to work both independently and in a team environment with people at different levels within the company. This is an extremely interactive role that requires excellent written and oral communication skills, a collaborative mindset, and the ability to succinctly identify and communicate decisions to various teams. + Demonstrated experience in identifying innovations, drafting and prosecuting pharmaceutical patent applications in the U.S. and other countries, as well as conducting inventorship, freedom to operate, patent validity and infringement analyses. + Excellent organizational skills, attention to detail, and ability to handle and prioritize multiple time-sensitive projects. + Experience with regulatory exclusivities for both BLAs and NDAs. + Experience with US Post-Grant Proceedings, ANDA litigation, and EP Opposition. + Ability to distill complexity into simple terms and to communicate decisively with sound judgment. + High degree of organizational awareness, ability to connect the dots to understand all the interdependencies and big picture. **Education and Experience** + JD with 5-plus years patent experience in the pharmaceutical/biotech/life science field. + Registered to practice before the U.S. Patent and Trademark Office. + Juris Doctorate from an accredited law school and member of at least one U.S. state bar. + Advanced degree in chemistry, biology, immunology, biochemistry or substantial R&D experience. Advanced degree in chemistry or biochemistry preferred. The base salary range for this role is $212,000 to $265,000. Base salary is part of our total rewards package which also includes the opportunity for merit-based salary increases, short-term incentive plan participation, eligibility for our 401(k) plan, medical, dental, vision, life and disability insurances and leaves provided in line with your work state. Our robust time-off policy includes flexible paid time off, 11 paid holidays plus additional time off for a shut-down period during the last week of December, 80 hours of paid sick time upon hire and each year thereafter. Total compensation, including base salary to be offered, will depend on elements unique to each candidate, including candidate experience, skills, education and other factors permitted by law. Disclaimer: The above statements are intended to describe the general nature and level of work being performed by people assigned to this classification. They are not to be construed as an exhaustive list of all responsibilities, duties, and skills required of personnel so classified. All personnel may be required to perform duties outside of their normal responsibilities from time to time, as needed. **Confidential Data** : All information (written, verbal, electronic, etc.) that an employee encounters is considered confidential. **Compliance** : Achieve and maintain Compliance with all applicable regulatory, legal and operational rules and procedures, by ensuring that all plans and activities for and on behalf of Sumitomo Pharma America (SMPA) and affiliates are carried out with the "best" industry practices and the highest ethical standards. It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment. An employer who violates this law shall be subject to criminal penalties and civil liability. **Mental/Physical Requirements** : Fast paced environment handling multiple demands. Must be able to exercise appropriate judgment as necessary. Requires a high level of initiative and independence. Excellent written and oral communication skills required. Requires ability to use a personal computer for extended periods of time. **Sumitomo Pharma America (SMPA)** **is an Equal Employment Opportunity (EEO) employer** Qualified applicants will receive consideration for employment without regard to race; color; creed; religion; national origin; age; ancestry; nationality; marital, domestic partnership or civil union status; sex, gender; affectional or sexual orientation; disability; veteran or military status or liability for military status; domestic violence victim status; atypical cellular or blood trait; genetic information (including the refusal to submit to genetic testing) or any other characteristic protected by law. Sumitomo Pharma Co., Ltd. is a global pharmaceutical company based in Japan with key operations in the U.S. (Sumitomo Pharma America, Inc.), Canada (Sumitomo Pharma Canada, Inc.) and Europe (Sumitomo Pharma Switzerland GmbH) focused on addressing patient needs in oncology, urology, women's health, rare diseases, psychiatry & neurology, and cell & gene therapies. With several marketed products in the U.S., Canada, and Europe, a diverse pipeline of early- to late-stage assets, and in-house advanced technology capabilities, we aim to accelerate discovery, research, and development to bring novel therapies to patients sooner. For more information on SMPA, visit our website ( or follow us on LinkedIn ( . At Sumitomo Pharma America, our work is guided by the Sumitomo Pharma mission, vision and values, which tie closely to our company's cultural pillars. **Our** **Mission** _To broadly contribute to society through value creation based on innovative research and development activities for the betterment of healthcare and fuller lives of people_ _worldwide_ **Our** **Vision** _For Longer and Healthier Lives, we unlock the future with cutting edge technology and_ _ideas_
Posted 2025-07-19

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