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Intellectual Property Manager


Takara Bio USA, Inc.

Job Location

2560 Orchard Parkway
San Jose, CA 95131
United States

Job Description

Job Title:         Intellectual Property Manager
Reports to:       CSO
FLSA Class:     Exempt

Introduction to Job Post:
Takara is looking for an energetic, self-directed and articulate Patent Agent to manage our broad intellectual property estate.  In this role, you will report to the CSO and will act as the primary contact with outside counsel to drive the maintenance and prosecution of our IP portfolio.  In addition, you will work with the CSO and other members of R&D and Corporate Development on the development of new IP as well as assist in reviews of 3rd party IP. The ideal candidate will demonstrate a strong background in molecular biology and have at least 3 years’ experience drafting and prosecuting patents at a law firm. He or she should be a registered Patent Agent in good standing of the USPTO. Strong, written/oral communication, and interpersonal skills are a must.

The Intellectual Property Manager role is office-based.

Essential Functions:

  • Primary responsibility for managing communications with outside counsel; actively assist in preparing and prosecuting domestic and foreign patent applications, including preparing arguments in response to office actions and drafting provisional patent applications.
  • Works with R&D to assess patentability of new inventions; assist in drafting and reviewing related invention disclosures.
  • Review and prepare freedom-to-operate opinions on 3rd party IP in collaboration with outside counsel, as necessary.
  • Responsible for assigning products to relevant licenses for royalty reporting purposes.
  • Assist senior management in reviewing licensing and business transactions involving intellectual property based on review of relevant IP.
  • Assist in the development and implementation of strategies for Company’s various patent portfolios.
  • Provide periodic training to Company employees regarding the protection of intellectual property.
  • Maintain knowledge of relevant laws, regulations or statutes affecting the Company’s intellectual property.
  • Assist in developing budget IP expenditure. Assist in managing expenses to budget.
  • This position does not have supervisory responsibilities.

Education/Certification, Experience, and Competencies:

  • A Ph.D. in a life-science discipline required.
  • Must be a USPTO registered Patent Agent.
  • A minimum of 3 years’ experience preparing and prosecuting patent applications and conducting patentability and freedom-to-operate searches either in-house or within an established law firm.
  • Skilled in preparing, filing, and prosecuting domestic and foreign patent applications.
  • Strong advocacy skills in connection with patent prosecution.
  • Proven ability to handle multiple projects and effectively manage priorities so as to meet tight deadlines.
  • Independent and self-motivated, with a strong sense of urgency and ability to drive a project to completion.
  • Excellent oral and written communication skills – must be able to communicate clearly both within the organization and externally to drive projects forward.
  • Highly effective analytical and problem-solving skills, including excellent attention to detail.
  • Collaborative personality with strong interpersonal skills.
  • Must be fluent in written and spoken English.
  • Proficient in Microsoft Office, including Excel and Word.

AAP/EEO Statement:
Takara Bio USA, Inc. does not discriminate in employment on the basis of race, color, religion, sex (including pregnancy and gender identity), national origin, political affiliation, sexual orientation, marital status, disability, genetic information, age, membership in an employee organization, retaliation, parental status, military service, or other non-merit factor.

Please note this job description is not designed to cover or contain a comprehensive listing of activities, duties or responsibilities that are required of the employee for this job. Duties, responsibilities and activities may change at any time with or without notice.