Intellectual Property and Patent Portfolio Manager

Telethon is a major Italian charity focused on rare genetic diseases. Founded in 1990, its mission is to advance biomedical research towards the cure of genetic diseases with the ultimate goal of making new therapies available to patients in need. Telethon has so far funded 2.804 projects for an overall amount of 623,9 million Euro, both within its own research institutes and through grants to Italian academic institutions, with the purpose of progressing research from the lab bench to the patient bedside and has secured critical competences for such purpose, including translational research management, regulatory and CMC expertise, clinical operation and business development.

We are seeking a highly motivated and experienced individual to join our Business Development Team.

The Telethon Intellectual Property Manager will be part of the Business Development Office, which has the purpose of managing and adding value to know-how and intellectual property and supporting the scientific groups in order to generate new therapeutic/diagnostic products through mutually successful partnerships with industries and investors.

In this context, the Intellectual Property Manager will be a central actor in the management of intellectual property to safeguard and broaden its exploitation potential, including in the context of industrial partnerships and spinoff.

Major efforts will be devoted by the Intellectual Property Manager to supervise/directly manage the patent portfolio and all activities related to the protection of intellectual property, nurture the relationship with scientists and industrial partners on intellectual property matters, as well as to generate best practices to meet Telethon mission.

What you'll do:

• Conduct/supervise IP scouting and ownership evaluations, as well as patentability and preliminary FTO assessments; manage the revision process through kol; draft/revise appropriate reports;
• Manage/supervise interactions with inventors and patent firms, as well as with industrial partners on IP matters;
• Design the specific protection strategy taking into consideration applicability, competitive landscape and exploitation paths;
• Draft/revise patent applications; supervise and contribute to prosecution activities cooperating with scientists and patent attorneys;
• Manage patent portfolio, also through external advisors; supervise filing and maintenance; periodically revise the patent portfolio according to R&D objectives;
• Manage patent firms in terms of budget, invoicing, identification of new suppliers, maintenance of trusted ones;
• Contribute to the definition of IP clauses in research and IP exploitation contracts; negotiate and manage IP contracts (e.g. assignments, IIAs);
• Contribute to the definition of IP clauses in employment and collaboration contracts for Fondazione Telethon’s research personnel and collaborators

Profilo

What you'll need:

• Background in biology, biomedical sciences, biotechnology or medicine; a PhD degree would be preferable;
• 5+ years of experience working with intellectual property law, management of IP and patent portfolios
• excellent written and oral communication skills in English 

• Ability to work both independently and collaboratively with others on complex matters;
• Strong project management and coordination skills with proven ability to meet deadlines, prioritize assignments, and run multiple projects;
• Excellent verbal and written communication skills with both technical and non-technical partners, with focus on informing, influencing, and relationship building;
• Excellent attention to detail.

Work contract: CCNL COMMERCIO, full-time, permanent contract

Place of work: Milan

Start date: 2022

RAL: based on experience