IP Counsel

YOUR TASKS AND RESPONSIBILITIES

• Actively involve In-house Prosecution Project and provide support to the Global IP team, by advising and working with the globally responsible patent attorneys and outside agents in drafting, filing and prosecuting Chinese patent applications or PCT applications entered into China.
• Coordinate with Global IP team in reexamination/invalidation proceedings and administrative appeals, and take initiative in various litigation cases and develop appropriate protection/defensing strategy.
• Advise China local business on IP matters, such as patent and regulatory exclusivity situations, for our own and competitor products, including patent validity analysis and freedom to operate clearances.
• Provide on-site IP support to related functions in Beijing, including Commercial, Regulatory, Market Access, etc..
• Provide IP support to local Business Development and Marketing team, including IP evaluation of transaction opportunities, evaluation of in licensing opportunities, negotiation support, and contract drafting during active transactions.
• Track and communicate legal developments in the IP area to global related functions.
• Search and Monitor patent activities in China in fields of interest to the Company.
• Conduct patent/IP trainings in order to maintain a high level of patent/IP awareness throughout the Company.

WHO YOU ARE

• Deep understanding of the scientific, legal, administrative regulatory and commercial aspects of pharmaceutical or agrochemical business
• Scientific background in pharmaceutical, chemistry and/or biological sciences
• In-depth knowledge of Chinese patent law, and preferably also of Chinese trademark law, and pharmaceutical regulatory law and regulations.
• Effective presentation and communication skills
• Demonstrated ability to work independently as well as collaboratively in a team
• A considerable degree of flexibility and the capability of setting priorities to handle numerous cases simultaneously
• Strong customer-service focus to build and sustain good working partnerships with key stakeholders, clients in the China area, global patent attorneys and outside counsels.
• Strong organization and time management skills with flexibility,creativity, resourcefulness to successfully prioritize and manage multiple, competing priorities simultaneously

•  Desirable Education: A graduate degree in Science (pharmaceutical,  chemical or biological sciences)

• Qualification: Registered to practice before Chinese patent office or work as Patent Examiner at China IP Office

• Languages: excellent in professional English writing & good in spoken English (required)

•  At least 8 years' patent working experience in MNC or IP counseling experience directly facing MNC clients in a reputable patent/law firm

• Practiced in Chinese patent litigation and being familiar with civil and administrative court proceedings