Associate General Counsel-IP Due Diligence
AbbVie · North Chicago, IL · 3 mo ago
LegalFull-time
Responsibilities
- Lead and execute comprehensive IP due diligence for M&A, licensing, option, and venture transactions, assessing patent coverage, freedom-to-operate, validity, enforceability, and competitive landscape
- Provide legal advice and counsel to cross-functional business development, R&D, and commercial teams on IP matters arising in the context of transactions and strategic partnerships
- Analyze and assess third-party patent portfolios and competitive landscapes, including claim scope, prosecution history, litigation exposure, and conduct patent landscaping across counterparty portfolios or various mechanisms-of-action to identify strategic risks, white-space opportunities, and competitive intelligence insights in support of transaction structuring and risk mitigation
- Prepare and present clear, actionable due diligence reports and risk assessments to senior legal, business, and scientific stakeholders
- Partner with external counsel and internal scientific teams to conduct prior art searches, validity assessments, and freedom-to-operate analyses in support of transaction due diligence
- Lead and support negotiations in connection with licensing, M&A, option, and venture transactions, working closely with business development and legal colleagues
- Build and manage productive relationships with science, evaluation, and business development teams to ensure IP considerations are integrated throughout the deal lifecycle
- Interact regularly with IP team leadership to provide updates on transaction diligence activities, escalate key risks, and align on IP strategy
- Lead and support patent prosecution activities across a range of modalities, including complex and simple biologics, peptides, small molecule pharmaceuticals, or device-related inventions, coordinating with outside counsel and internal R&D teams to develop and execute prosecution strategies aligned with business objectives
Qualifications
- JD degree from an accredited law school, active state bar admission enabling in-house practice (specific state not required), and registration to practice before the USPTO as a patent attorney
- ~8 years of experience practicing patent law as a patent attorney at a law firm and/or life sciences company, with substantial experience conducting IP due diligence in a pharmaceutical or biotechnology context
- Prior due diligence experience in simple biologics, complex biologics, peptides, and other small molecule pharmaceuticals
- Experience with biosimilars or generics portfolios
- Technical background relevant for pharmaceutical IP due diligence, such as:
- Experience with small molecule and/or biological pharmaceutical discovery & development, and/or
- Technical degree in a relevant field, such as molecular biology, biotechnology, biochemistry, biology, chemistry, chemical engineering, or biomedical engineering
- Strong legal, analytical, communication, collaboration, and people skills
- Demonstrated ability to manage complex projects to meet deadlines
Preferred Qualifications
- Prior pharma or biotech due diligence experience in M&A, licensing, or option deal transactions
- Experience with biosimilars or generic pharmaceutical patent portfolios
- Experience advising on venture transactions or strategic collaborations with IP components