Astellas Pharma Senior Director, IP Legal, Trademarks in Northbrook, Illinois
Developing innovative therapies is one of the most challenging, most essential and personally rewarding fields in science. This is the most exciting time to be a part of Astellas, a company with a uniquely collaborative and patient-focused culture.
There's something special about working at Astellas. It's reflected in our focus on the people we serve, the way we treat each other and the results we achieve together as a company.
Astellas is announcing a Senior Director, IP Legal, Trademarks in Northbrook, IL.
Purpose & Scope:
The Sr Director, IP Legal, Trademarks, is a key IP team member and a subject matter expert in providing practical, timely, high quality advice to key business partners globally on Trademark, Copyright and Domain Name issues. The Senior Director, IP Legal, Trademarks, independently identifies Trademark and Copyright related business issues, provides legal options and analysis of possible solutions, and gives recommendations for addressing these issues which fosters the Company's business, advances the Company's goals and minimizes risks to the Company. The Senior Director, Trademarks, advises and consults with Research, Medical & Development and Commercial employees, managers and senior management, including affiliates, and educates those clients about ongoing initiatives and proactive measures and approaches to both protect the Company's IP and reduce legal and IP-related business risks for the Company.
Further, the Sr Director, IP Legal, Trademarks will operate as the Global Trademark Lead, responsible for managing the Company's Trademark, and Domain Name portfolio. As the Global Trademark Lead, the Sr Director, IP Legal, Trademarks, will be responsible for overseeing and managing all aspects of Trademark acquisition, enforcement and defense, including analyzing and strategically resolving complex matters, proactively identifying potential risk areas, and recommending appropriate and strategic processes and guidelines to protect the Company's business interests. Additionally, the Sr Director, IP Legal, Trademarks, will provide leadership, development and management of lawyers or staff working in the above areas.
Essential Job Responsibilities:
- Provide leadership and oversight to the Global Trademark Team, including Japan and UK based attorneys and paralegal staff.
- Provide oversight and management of the Company's global trademark and domain name portfolios.
- Serves as a subject matter expert in providing legal advice to business partners in the areas of Trademark, Copyrights and Domain Names.
- Guide and support global, cross-functional teams on issues related to Trademark strategy development, clearance, acquisition, protection and maintenance.
- Provide oversight of foreign and domestic external counsel and other service providers.
- Support and drive global branding initiatives for Company assets in Development.
- Prepare cease and desist letters and handle other enforcement matters including domain name disputes, UDRP actions, TTAB proceedings, and take down procedures on social media platforms; Negotiate and achieve resolution, including agreements/settlements as appropriate.
- Develop, review and revise best practices, guidelines and processes on trademark, copyright and domain name matters, for both internal and external use.
- Build and lead the development of trademark prosecution templates and playbooks.
- Partner with Legal Team Members to support trademark aspects of transactional, regulatory and commercial matters as needs arise.
- Assist in the creation and implementation of policies and procedures within the TM team. May identify and lead the development of business or team process improvements that will prevent or minimize future IP-related business risks.
- Perform special projects as assigned and demonstrates consistent leadership on a wide range of issues.
- Initiate and oversee administrative proceedings to oppose or invalidate third party trademark rights, where appropriate.
- Partner with Product Security to appropriately address IP violations and counterfeit issues globally.
- Lead efforts to evaluate outside counsel and vendor usage and drive efficiencies related to the engagement of outside counsel with respect to TM prosecution and renewals.
- Reports to Vice President, IP-Legal, Commercial, Trademarks and Litigation
- Leads the Global Trademark Team including management of Trademark attorneys and paralegal staff globally.
- Works closely and collaborates with other teams and team members reporting into the Head of IP-Legal, as well as those reporting into the Head of IP-INV and the broader Legal Team.
- Provides Trademark, Copyright and Domain Name support to key clients within the Commercial and Medical & Development organizations primarily, including Astellas commercial affiliates.
- Provides Trademark, Copyright and Domain Name support to key clients in the Research organization and affiliates.
- JD degree and admitted to practice before a state Bar or equivalent training and/or license in another jurisdiction.
- Minimum of 10 years industry experience in corporate trademark department or law firm, including experience in Trademark filing, prosecution, clearances, opposition practice, counseling and development of trademark strategies.
- Experience in leading a team of TM attorneys and paralegal staff.
- Solid understanding of global trademark and copyright laws including procedural laws and ability to advise internal clients from a global perspective.
- Experience managing Trademark, Copyright and Domain Name issues and portfolios.
- Understanding of how to balance legal risk with business objectives to successfully achieve results.
- Ability to counsel clients and management, including the ability to communicate risks clearly and succinctly on TM, Copyright and Domain Name matters.
- Strong knowledge and understanding of the pharmaceutical industry, including, R&D, regulatory, manufacturing, and commercial elements.
- Excellent written and verbal communication and interpersonal skills including the ability to communicate complex concepts and practical solutions effectively with all levels of the organization.
- Self-motivated, strategic, highly organized with the ability to manage multiple projects and work successfully in a fast-paced environment under tight deadlines.
- Works independently but with supervision from leadership as needed.
- Strong ability to effectively interact with senior leaders globally. Understands and appropriately manages the cultural and logistical challenges of working with a foreign parent company and global organization.
- Ability to independently and effectively provide leadership to cross-functional and global teams and to deliver presentations and training to all levels of the organization.
- Solid understanding of legal issues with potential overlap with IP, including regulatory processes and timelines and transactional matters.
- Ability to identify and implement process improvements.
- Experience with Anaqua docketing system
Equal Opportunity Employer Minorities/Women/Protected Veterans/Disabled