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Sanofi Group Senior Counsel, Digital and Device IP, Global Intellectual Property Department in Cambridge, Massachusetts

POSITION OVERVIEW

The Senior Counsel will be an experienced patent attorney responsible for digital and medical device projects and will be part of the US team. The role will be dedicated to all aspects of IP protection for a diverse range of programs across Sanofi's business units. The patent attorney will advise on a wide range of intellectual property matters, including patent preparation and prosecution, worldwide IP strategy and portfolio management, patentability and Freedom to Operate analyses. The position has the responsibility to secure Sanofi’s market position in a rapidly developing environment, to contribute to building and implementing a global IP strategy in relation to digital and medical device technologies, and to counsel and advise research & development and business teams to make informed decisions and take reasonable actions.

The position is located at 50 Binney Street in Cambridge, Massachusetts.

Principal Accountabilities:

  • Proactively develop IP strategies in the areas of digital and medical device technologies, solicit invention disclosures, and prepare, file, and prosecute US, EPO, and foreign patent applications as well as other suitable IP protection means.

  • Interact with clients at all levels of the organization (including Research & Development, Project Management, Business Development, Franchise, Industrial Affairs) in the US, Europe and Asia in IP related matters.

  • Proactively counsel clients about IP strategy related to the client’s area of business.

  • Provide patentability assessments of IP related to internal, collaborative, and external projects.

  • Strategize, initiate, defend, and manage post issuance patent proceedings such as post grant reviews, inter partes reviews, oppositions, and litigations.

  • Participate in due diligence and drafting, reviewing, and negotiation of agreements covering intellectual property rights.

  • Conduct, direct, and analyze patent searches and render opinions on validity, non-infringement, and patent avoidance of third-party patents.

  • Review proposed research papers and other publications for any impact on patent strategies.

  • Closely monitor the development of the legal landscape related to digital IP.

Required Profile

  • A highly motivated and performance driven person exhibiting initiative to contribute to the team in more ways than mere handling of assigned projects.

  • Graduate degree (MS, PhD) in physics, electric, software and/or electronic engineering or similar related sciences. A PhD would be a plus.

  • Registered US Patent Attorney.

  • Member of at least one US State Bar.

  • At least 7 years of patent law experience gained in-house and/or in a law firm.

  • Extensive international (focus on US, Europe and China) knowledge in IP strategies related to digital technologies, in particular:

  • Computer-implemented inventions

  • Artificial intelligence core technologies

  • Applications of artificial intelligence

  • Industry 4.0

  • Electronics, electro-mechanics.

  • Experience in managing patent litigations, US post-grant proceedings, EP Oppositions.

  • Good team player and proactive communicator. Ability to work in a matrix organization.

  • Ability to independently handle preparation and global prosecution of patent applications.

  • Ability to work in a team within an international professional network and interact with colleagues in other countries.

  • Fluent in English, familiarity with French and/or German would be an asset.

  • Understanding of mechanical arts is a plus.

  • Experience in IP due diligence and agreement drafting is a plus.

  • Knowledge of pharma or life sciences is a plus.

  • Knowledge of regulatory processes is a plus.

Sanofi Inc. and its U.S. affiliates are Equal Opportunity and Affirmative Action employers committed to a culturally diverse workforce. All qualified applicants will receive consideration for employment without regard to race; color; creed; religion; national origin; age; ancestry; nationality; marital, domestic partnership or civil union status; sex, gender, gender identity or expression; affectional or sexual orientation; disability; veteran or military status or liability for military status; domestic violence victim status; atypical cellular or blood trait; genetic information (including the refusal to submit to genetic testing) or any other characteristic protected by law.

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At Sanofi diversity and inclusion is foundational to how we operate and embedded in our Core Values. We recognize to truly tap into the richness diversity brings we must lead with inclusion and have a workplace where those differences can thrive and be leveraged to empower the lives of our colleagues, patients and customers. We respect and celebrate the diversity of our people, their backgrounds and experiences and provide equal opportunity for all.

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