Princeton Legal Search Group has been retained on an exclusive basis by Daiichi Sankyo to lead the search for Vice President, Intellectual Property and Business Development. The VP of IP & BD is responsible for the protection of and maximization of Daiichi Sankyo’s US IP portfolio and for managing the portfolio of legal work relating to Daiichi-Sankyo’s Global and U.S. Business Department departments, working directly with both DSI senior management and Tokyo senior management on a regular basis. Serves as the Legal & Corporate Affairs Department’s designated point-person, ambassador and liaison to the most senior management in Tokyo’s Intellectual Property, Licensing and Business Development Departments for the majority of issues, and the Legal Affairs Department in Tokyo on IP litigation and BD matters.
Responsibilities:
– Advises and serves as a liaison between Daiichi Sankyo Tokyo Intellectual Property Department and each product development team in the U.S. Works closely with development teams to monitor results, new uses, etc. arising during research and development of products and to manage disclosures and publications of such findings with Tokyo to ensure that all appropriate patentable matter is protected in a timely manner by the filing and prosecution of patent applications in the U.S. and worldwide (in coordination with Daiichi Sankyo Tokyo Intellectual Property Department). Collaborates with Daiichi Sankyo Tokyo Intellectual Property Department in obtaining and interpreting infringement/validity opinions authored by outside U.S. patent attorneys regarding early research and development compounds. Assists Daiichi Sankyo Tokyo Intellectual Property Department and Daiichi Sankyo, Inc. in drafting patents. Works closely with development teams regarding marketed products, in order to manage/process patent term extensions, Orange Book listings, etc., as well as ensure that any new patent protections available are obtained for new uses, different results, etc.; advises Integrated Development Teams for pipeline products on IP, regulatory, and contractual issues arising during the course of product development. Carries out trademark searches and files and prosecutes trademark applications for pipeline products; maintains trademark portfolio; enforces trademark rights against unauthorized uses.
– Assists brand teams for marketed products and the new product planning department in preparing sales forecasts by monitoring and analyzing patent portfolios and patent litigation of competitive products.
– Conducts patent due diligence for local licensing-in product candidates for Daiichi Sankyo Inc. (U.S.) and global licensing-in product candidates.
– Manages the portfolio of legal work relating to Daiichi-Sankyo’s Global Business Development and US Business Development Departments. Supervises the work of attorneys supporting these projects, including: the overall legal due diligence process; drafting and negotiation of complex global/U.S. agreements covering licensing, co-promotion/co-development, acquisitions, and research collaborations; regulatory filings (e.g., Hart-Scott Rodino); and relationship management with marketing/development partners, such as drafting/negotiating amendments, and advising senior management in the US and Japan on legal strategies and contract interpretation issues.
– Monitors current developments in several key legal areas and provides the Tokyo Intellectual Property Department and DSI’s General Counsel with updates regarding same. Recommends and implements strategic policies and procedures in the U.S. and in Tokyo to maximize IP protection in view of new legal and regulatory developments Actively participates in PhRMA’s IP/Patents committee. Advises and collaborates with Government Affairs Department on proposed/pending legislation relating to Hatch-Waxman and patent laws. Supervises work of Manager of Intellectual Property (Daiichi Sankyo Tokyo Intellectual Property Department representative assigned to U.S IP Department). Trains representative on all aspects of U.S. patent laws and regulations, and drafting licensing agreements.
– Carries out pre-litigation investigations, selection of outside litigation counsel, directs strategy for, and manages patent litigations involving marketed and pipeline products; counsels senior management (U.S. and Tokyo) on settlement options, and negotiates directly with third parties for strategic settlements of such IP related matters.
Qualifications: Successful candidates will be able to meet the qualifications below with or without a reasonable accommodation.
Education Qualifications (from an accredited college or university)
– Bachelor’s Degree in Chemistry or Biology Sciences required
– JD from Law School of recognized standing, and Bar Admission in NJ (direct admission or eligible for limited in-house licensing in NJ.) required
– Admission to practice in the U.S. Patent Office required Experience
Qualifications
– 10 or More Years post-law school experience in the filing, prosecution, and litigation of patents, including pharmaceutical entities. required
– 10 or More Years of pharmaceutical and/or relevant in-house corporate experience is required. required
– Extensive experience in providing legal support (not limited to IP issues) for pharmaceutical licensing, co-promotion and co-development, research alliances, etc. required
Physical Requirements
– Ability to travel up to 20% (Travel to Japan 3-4 times per year required)