Head IPR

3 weeks ago


Navi Mumbai, India Umedica Labs Full time

UMEDICA is a vertically integrated company engaged in the manufacturing and export of a wide range of finished formulations i.e., Injectable, Tablets, Capsules, Suspensions, Dry Syrups, etc. UMEDICA's manufacturing facility, located in Vapi (Gujarat), is approved by global regulatory. UMEDICA was founded in 1983 and has business operations in more than 85 countries including EU, UK, USA, Canada, Australia, Middle East, Central & South American countries, Africa, Asia & CIS countries.

We at UMEDICA strive to achieve more through a culture of innovation & continuous improvement.

As part of our further expansion and growth plans, we are looking to hire an aggressive and dynamic General Manager/Sr General Manager of Intellectual Property (IP) will lead and manage all IP functions of the organization, including patent drafting and filing, prosecution, litigation monitoring, patent review, and part of portfolio management team. The incumbent will be responsible for developing a global IP strategy that aligns with business and R&D goals, ensuring the organizations innovations are well protected, and enabling competitive advantage in the pharmaceutical industry. This is a senior leadership role requiring deep technical and legal expertise and strong cross-functional collaboration.

This position is based at our R&D center at Turbhe Navi Mumbai and will report to the CSO

The remuneration package will be commensurate with the incumbent's professional experience and will be in line with market standards.

Key Responsibilities:

1. IP Strategy Development & Leadership

  • Define and implement the global IP strategy in alignment with business and product life-cycle goals.
  • Act as the key advisor to executive management on IP-related risk, opportunity, and value creation.
  • Represent IP in strategic business decisions including R&D, regulatory submissions, licensing, partnerships, and M&A.

2. Patent Filing & Drafting

  • Evaluate invention disclosures and determine patentability and commercial potential.
  • Oversee or directly draft patent applications, including provisional, PCT, and national phase filings.
  • Coordinate with inventors, scientists, and R&D teams to ensure comprehensive and accurate patent coverage.
  • Ensure timely preparation and submission of filings to avoid loss of rights.

3. Patent Prosecution

  • Manage the prosecution process across major jurisdictions (USPTO, EPO, IPO India, CNIPA, JPO, etc.).
  • Review and respond to office actions, examiner reports, and pre/post-grant oppositions.
  • Guide external counsel on prosecution strategies that maximize protection and minimize cost.
  • Ensure compliance with procedural deadlines and track legal status of applications.

4. IP Portfolio Management

  • Build, maintain, and optimize the global IP portfolio (patents, trademarks, designs).
  • Conduct regular audits of the portfolio to ensure strategic alignment and cost-effectiveness.
  • Categorize IP assets based on technology type, therapeutic area, priority, and revenue contribution.
  • Identify gaps in protection and proactively file new applications.
  • Implement patent family management and life-cycle strategies including SPCs, PTEs, and extensions.
  • Monitor annuity payments and renewal deadlines with internal or third-party IP management systems.

5. Patent Review & Competitive Intelligence

  • Perform detailed freedom-to-operate (FTO) and landscape analysis to support new product development and market entry.
  • Conduct patent validity/infringement analysis for internal innovation and third-party products.
  • Monitor competitor IP filings and identify white space or blocking patents.
  • Provide reports and alerts to R&D and management regarding emerging threats or opportunities.

6. IP Litigation Management

  • Monitor and manage all IP-related litigation, including:

  • Paragraph IV ANDA litigation (for generics)

  • Patent oppositions (India, EPO, US)
  • Trade secret or trademark disputes

  • Develop legal strategies in collaboration with external counsel.

  • Assist with evidence gathering, expert selection, and claim construction.
  • Support pre-litigation risk assessments and alternative dispute resolution (ADR) strategies.

7. IP Transactions & Due Diligence

  • Lead IP due diligence for:

  • In-licensing and out-licensing of technology

  • Joint ventures and collaborations
  • Product acquisitions and divestitures

  • Draft and review IP-related clauses in agreements (e.g., licensing, MTAs, CDAs, co-development contracts).

  • Ensure proper assignment of IP rights from employees, consultants, and research partners.

8. Compliance, Policy & Training

  • Ensure compliance with international IP laws, patent office procedures, and regulatory IP linkage systems (e.g., Orange Book listings).
  • Develop internal IP policies and SOPs for invention disclosure, confidentiality, and data protection.
  • Train R&D and business teams on IP awareness, documentation, and competitive behavior.
  • Monitor potential misappropriation of trade secrets or proprietary data.

Required Qualifications:

  • Educational Background:

  • M.Pharm, M.Sc., PhD in Chemistry, Biotechnology, Pharmacy, or related life sciences field.

  • Law degree (LLB or LLM) or qualification as a Registered Patent Agent (India/US/EU) preferred.

  • Professional Experience:

  • Minimum 15– 18 years of experience in pharmaceutical IP, with at least 10 years in a senior leadership role.

  • Extensive hands-on experience in patent drafting, prosecution, FTO, portfolio management, and litigation.
  • Proven ability to manage IP assets for generic, branded, 505 b2 , Oral solids, Injectables and Liquids product know how is must.

Key Skills & Competencies:

  • In-depth knowledge of patent law, regulatory exclusivities, and pharma R&D processes.
  • Strong command of tools like Derwent Innovation, PatBase, Orbit, USPTO/EPO databases, Scifinder, IPD analytics.
  • Excellent communication and negotiation skills.
  • Strategic thinker with a strong commercial orientation.
  • Ability to manage teams and external legal/IP partners.
  • Experience with IP management systems (e.g., Anaqua, CPA Global, IPfolio).

Preferred Attributes:

  • Experience with global markets including US, EU, India, China, Brazil, and Japan.
  • Familiarity with SPC, PTE, data exclusivity, and patent term restoration.
  • Leadership in managing multi-country litigation or opposition cases.
  • Know how of IP assessment of finished products must, API will be additional advantages

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