Vice President, Intellectual Property

GENERAL SUMMARY:

4DMT is seeking an experienced intellectual property attorney, with a focus in patent prosecution, to manage 4DMT’s intellectual property portfolio and provide strategic counsel and training on all facets of patent, trade secret, trademark, and copyright law, including procurement, registration, enforcement, freedom to operate, and IP litigation. The role will also counsel 4DMT’s R&D teams on a wide range of day to day transactions with partners that are central to their work, and well as provide IP input on strategic transactions and support IP diligence efforts. The role will work cross-functionally with R&D, Manufacturing, Finance, Business Development, and IT teams, and may interact with other teams, depending on project needs. The role will report to and be a strategic thought partner to the Chief Legal Officer. The ideal candidate must be an experienced attorney, with a strong background in the biopharmaceutical industry and excellent business judgment and interpersonal skills. In depth knowledge of the drug development process, regulatory and compliance requirements, strategic partnerships, and commercial strategy is strongly preferred.  This role is based out of our Emeryville, CA office and is expected to be available for in office work on a hybrid basis.

RESPONSIBILITIES:

• Directs and implements 4DMT’s intellectual property strategy, and manages its patent, trade secret, and trademark portfolio; implements a strategy for IP lifecycle management.
• Directs outside counsel in the preparation and prosecution of applications and responding to office actions; directs outside counsel in evaluating the patentability of invention submissions and registrability of trademarks globally; manages related outside counsel budgets.
• Identifies strategic areas for patenting, trade secret protection, and trademarking; collaborates with R&D, Manufacturing, Clinical Science, and other functions to proactively identify and develop patentable intellectual property to prepare, file, and prosecute.
• Manages patentability, freedom-to-operate, infringement, validity, and regulatory exclusivity analyses.
• Identifies and tracks 4DMT trade secrets and provides counsel with respect to 4DMT’s trade secret protection practices.
• Provides IP perspective and counseling at 4DMT meetings and presents on IP topics.
• Counsels and trains internal clients on intellectual property practices and policies.
• Conducts IP due diligence for business development activities and supports IP due diligence related to financing activities.
• Drafts, reviews, and negotiates agreements to support R&D research activities, including NDAs, MTAs, MSAs, sponsored research agreements, consulting agreements, and licenses.
• Collaborates with Legal colleagues, Business Development, and other key leaders and functions on key strategic agreements, including licenses, collaboration agreements, and other business development efforts.
• Assists with other Legal Department matters, including litigation support, SEC reporting (IP-related sections), records management, compliance activities, and template projects.

QUALIFICATIONS:

Education:

• JD degree or equivalent from an accredited law school
• PhD in molecular biology, genetics, biochemistry, or other biological field related to the biopharma industry
• Admission to at least one state bar (preferably CA)
• Registered to practice before the United States Patent and Trademark Office

Experience:

• Strong knowledge of patent, trade secret, and trademark practices, as well as current US and foreign patent, trade secret, and trademark laws
• 12+ years of patent prosecution experience as an attorney in the life sciences field, particularly in biopharma (can be a combination of law firm and in-house experience).
• In-house experience in and knowledge of drug development, with expertise in genetic medicines preferred; in-house experience at one or more publicly-traded, commercial-stage biotechnology, pharmaceutical, or biopharmaceutical companies strongly preferred.

• Experience in counseling life sciences R&D teams with respect to day-to-day transactions. Experience reviewing and negotiating confidentiality agreements, material transfer agreements, sponsored research agreements, master services agreements, consulting agreements, and licenses.

• Experience working with data privacy and cybersecurity issues.

• Prior experience providing IP input on life sciences strategic transactions preferred.
• Experience working with data privacy and cybersecurity issues.
• Experience managing attorneys and/or non-attorney legal staff preferred

Skills:

• Excellent analytical and organizational skills, and demonstrated ability to effectively collaborate and manage several simultaneous projects under deadline pressure.
• Excellent communication (verbal and written), listening, negotiation, and presentation skills.
• Solid interpersonal skills and the demonstrated ability to influence and partner across all levels of the Company
• Highest integrity, excellent judgment, and the ability to proactively recognize and effectively communicate legal issues to the Chief Legal Officer and other members of company management.

Bay Area base salary compensation range: $322,000 - $394,000

National base salary compensation range: National: $293,000 - $356,000

Please note, the base salary compensation range and actual salary offered to the final candidate depends on various factors: candidate’s geographical location, relevant work experience, skills, and years of experience.