Patent Agent
Madrid, Community of Madrid, Spain
hace 5 días
source : Appcast

General Responsibilities

  • Analyzing the freedom to operate of mAbxience’s biosimilar products, their manufacturing processes, their uses, formulations and the related devices, to ensure non-infringing positions.
  • Assisting in due diligence and licensing deals.
  • Providing mAbxience relevant departments updated patent assessments and answers to IP related questions.
  • Filing oppositions or third-party observations against those patents and patent applications that could interfere with the products and business interests of mAbxience.
  • Providing technical support in IP matters to customers.
  • Helping to design the development and safe launching strategy of the biosimilar products in view of their patents landscape in every country in which the manufacturing and / or launch is intended.
  • Managing prosecution of mAbxience’s patent portfolio & filing patent applications.
  • Performing patentability studies.
  • Specific Responsibilities

  • Providing mAbxience’s management and Business development teams the preliminary patent assessments after a preliminary non-comprehensive patent search for decision-making and strategy-design for new candidate products.
  • Providing mAbxience’s management and Business development & R&D teams the full IP report with constraining dates for drug substance, drug product, approved uses and devices after a comprehensive patent search.
  • Provide R&D team guidance on the design of the upstream and downstream processes.

  • Freedom to operate analysis of the products and methods / processes, uses and devices according to in-house R&D proposals and / or product developments from third parties (co-developments, external developments, dossier acquisitions ) to ensure non-infringing positions.
  • Performing and revising periodic bibliographic searches in specialized databases covering the patent literature of the biosimilar products of interest.
  • Filing opposition against the grant of patents owned by third parties in close collaboration with external patent attorneys.
  • Analysis of relevant prior art documents and preparing grounds for opposition or third party observations . Filing third party observations (pre-grant opposition) to prevent the grant of patent applications (while under prosecution) owned by competitors that could interfere with the product developments of mAbxience.

  • Preparing in collaboration with R&D, management and Business development teams replies to requests from customers concerning IP issues.
  • Collaborating in aligning the strategies of IP, regulatory, supply and commercial teams to devise routes to key markets.
  • Attending meetings with other departments (R&D, clinical, RA) for programs review, risk management, pipeline review committee, etc.
  • Attending meetings with customers or partners and presenting IP situation of our products.
  • Managing mAbxience’s patent portfolio.
  • Patentability analysis of mAbxience’s own inventions such as formulations, methods / processes, etc. Drafting and filing the corresponding patent applications and manage their prosecution.
  • Requirements and personal skills

  • BSc degree and / or PhD in the fields of Biotechnology, Biochemistry, Biology or related field.
  • European Patent Attorney or part-qualified European Patent Attorney.
  • Between 5 and 7 years’ experience in similar positions working in-house in the pharmaceutical / biotech industries or in private practice.
  • Specific training and professional experience in the area of patents.
  • Very High level of English and Spanish; Knowledge of other European language is also a plus.
  • Willing to travel.
  • Attention to detail : Willing to get into the details of the prior art and inventions and to build technical expertise in these areas.
  • A team player : Strong interpersonal skills; enjoys working closely with non-IP professionals to support the interplay between IP and various aspects of the business.
  • High achievement orientation and customer & business vision
  • Good communication skills (oral and written).
  • Commitment to work, eager to learn.
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