Role Overview for Chief IP Counsel, Biotechnology – New York, NY
JRG Partners is proud to partner with a pioneering, clinical-stage biotechnology company at the forefront of developing life-changing therapeutics. Based in the vibrant heart of New York, NY, our client is driven by a mission to translate groundbreaking scientific discoveries into novel treatments for patients with unmet medical needs. We are seeking a visionary and strategic Chief Intellectual Property (IP) Counsel to join their executive leadership team. This is a paramount role responsible for shaping and executing a comprehensive global IP strategy that will safeguard the company’s innovation and secure its long-term competitive advantage in the marketplace.
The successful candidate will be more than just a patent attorney; they will be a strategic business partner, a forward-thinking leader, and the principal guardian of the company’s most valuable assets—its intellectual property. You will provide critical counsel to the CEO, Board of Directors, and the R&D leadership on all matters related to IP, from early-stage discovery and patent filing to late-stage clinical development and commercialization. This position offers a unique opportunity to build and lead an IP function within a dynamic, high-growth environment, directly influencing the company’s trajectory and success. You will be responsible for the entire IP lifecycle, including portfolio development, patent prosecution, freedom-to-operate (FTO) analyses, litigation management, and IP-related transactional support for licensing and collaborations. We are looking for a leader with deep scientific acumen, exceptional legal expertise, and a proven track record of success in the biotechnology industry.
Key Responsibilities of Chief IP Counsel, Biotechnology – New York, NY
The Chief IP Counsel will have a broad and impactful remit, overseeing all aspects of the company’s intellectual property. Key responsibilities include:
Strategic IP Leadership & Portfolio Management
- Develop, implement, and continuously refine a forward-looking global intellectual property strategy that aligns with the company’s scientific direction, clinical development plans, and overall business objectives.
- Provide strategic IP counsel to the executive team and Board of Directors on complex issues, including patentability, freedom-to-operate, competitive intelligence, and lifecycle management.
- Directly manage the company’s worldwide patent portfolio, including overseeing patent preparation, filing, and prosecution to secure robust and defensible patent protection for inventions.
- Lead patent portfolio reviews and annuity decisions to ensure cost-effective management and strategic alignment of IP assets.
- Collaborate closely with R&D teams to identify new inventions, conduct prior art searches, and ensure timely protection of innovations. Foster a culture of IP awareness and innovation throughout the organization.
- Manage and direct outside patent counsel in the US and abroad to ensure high-quality work product, strategic alignment, and budget adherence.
Risk Mitigation, Enforcement, and Litigation
- Conduct and analyze comprehensive freedom-to-operate (FTO), patentability, and validity searches and render legal opinions to guide R&D and business development activities.
- Proactively identify and assess third-party patent risks and develop and implement effective mitigation strategies, including design-arounds, licensing, or invalidity challenges.
- Oversee and manage all IP-related disputes, including patent litigation, oppositions, interferences, and other contested proceedings before the U.S. Patent and Trademark Office (USPTO) and international patent offices.
- Lead IP enforcement efforts against infringers to protect the company’s market position and proprietary technology.
- Monitor the competitive IP landscape to inform strategic decisions and identify potential opportunities or threats.
Transactional Support & Corporate IP Counsel
- Lead IP due diligence for a wide range of corporate transactions, including mergers and acquisitions (M&A), in-licensing, out-licensing, research collaborations, and strategic partnerships.
- Draft, review, and negotiate IP-related provisions in various agreements, such as licensing agreements, collaboration agreements, clinical trial agreements, and material transfer agreements (MTAs).
- Provide legal advice on matters relating to trademarks, copyrights, trade secrets, and domain names to ensure comprehensive protection of all company intellectual assets.
- Develop and implement internal policies and procedures for trade secret protection and confidential information management.
Requirements for the Chief IP Counsel, Biotechnology – New York, NY
The ideal candidate will possess a unique blend of deep scientific knowledge, extensive legal experience, and strong business acumen. We are seeking a highly motivated professional with the following qualifications:
Educational & Professional Credentials
- Juris Doctor (J.D.) degree from an ABA-accredited law school.
- Admission to at least one U.S. state bar (New York preferred) and in good standing.
- Registration to practice before the U.S. Patent and Trademark Office (USPTO) is mandatory.
- An advanced degree (Ph.D. preferred) in a relevant life sciences discipline, such as Molecular Biology, Cell Biology, Biochemistry, Genetics, or a related field.
Experience & Expertise
- A minimum of 15 years of experience practicing patent law, with a significant focus on the biotechnology or pharmaceutical industry.
- A combination of experience from a top-tier law firm and a corporate in-house legal department is strongly preferred.
- Demonstrated experience in building and leading an IP function and managing a team of legal professionals and support staff.
- Extensive, hands-on experience in global patent preparation and prosecution, particularly related to biologics, cell and gene therapies, monoclonal antibodies, or other complex biotechnologies.
- Proven track record in managing complex IP litigation, including Hatch-Waxman and/or BPCIA litigation.
- Substantial experience leading IP due diligence and negotiating IP terms in complex corporate transactions.
- Deep understanding of global patent law, regulations, and procedures, particularly in key markets such as the U.S., Europe, and Japan.
Skills & Attributes
- Exceptional strategic thinking and problem-solving skills, with the ability to translate complex legal and scientific concepts into clear business-oriented advice.
- Outstanding written and verbal communication skills, with the ability to effectively communicate with scientists, business leaders, and external partners.
- Strong leadership and management skills with a collaborative and team-oriented approach.
- Excellent business judgment and the ability to balance legal risk with business objectives.
- High level of integrity, professionalism, and ethical standards.
Benefits & Perks Offered
Our client is committed to attracting and retaining top talent by offering a highly competitive compensation and benefits package, including:
Competitive Compensation
A generous base salary, annual performance-based bonus, and a significant long-term equity package (stock options/RSUs).
Comprehensive Health & Wellness
Premium medical, dental, and vision insurance plans for you and your dependents, along with a robust wellness program and mental health support.
Retirement Savings
A 401(k) retirement plan with a generous company match to help you plan for your future.
Generous Time Off
A flexible and generous paid time off (PTO) policy, including vacation, sick leave, and company-paid holidays.
Professional Development
Ample opportunities for professional growth, including support for continuing legal education (CLE), conferences, and seminars.
Relocation Assistance
A comprehensive relocation package is available for the ideal candidate.
Inspiring Work Environment
The opportunity to work alongside a passionate and brilliant team dedicated to making a tangible impact on patients’ lives.
How to Apply
This is a retained search being conducted exclusively by JRG Partners. If you are a highly qualified and ambitious IP leader ready to make a significant impact in the biotechnology industry, we encourage you to apply.
To be considered for this confidential opportunity, please submit your resume and a cover letter detailing your relevant experience. All applications will be treated with the strictest confidence. For more information or to discuss your suitability for this or other senior-level roles, please connect with JRG Partners’ Intellectual Property Recruiters. We look forward to hearing from you.
