Division Counsel- Intellectual Property Strategy

Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals and branded generic medicines.

Our 114,000 colleagues serve people in more than 160 countries.

Division Counsel, IP Strategy

THE OPPORTUNITY :

Abbott is currently seeking an experienced IP attorney to join our IP Strategy team to develop and lead IP Strategy initiatives including cross-divisional processes and best practices, resource optimization, litigation support, talent training and development, competitive intelligence, and comprehensive offensive and defensive patent strategies.

We collaborate across our various medical device business divisions, adopting a team-oriented approach to partner with and deeply integrate into our diverse business units.

The IP attorney should be experienced, comfortable, and agile navigating various technologies.

Location of position is Santa Clara, CA, Sylmar, CA, Abbott Park, IL, Chicago, IL, Columbus, Ohio, Plano, TX, Plymouth, MN, or St. Paul, MN.

WHAT YOU’LL WORK ON :

Core job responsibilities include :

• In close collaboration with IP team members, strategically developing and executing offensive and defensive IP strategies to support business objectives, including building competitive patent portfolios;
• Conducting in-depth analyses of competitor products and IP portfolios;
• Monitoring and evaluating competitor IP portfolios and identifying strategic insights;
• Collaborating with commercial legal counsel, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters;
• Assisting internal and external litigation counsel on IP litigation matters;
• Developing and conducting employee training sessions on patent best practices, the protection of innovations through the patent process, maintaining confidential business information, contractor and vendor matters, and the overall development of intellectual property assets; and
• Conducting due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development.

REQUIRED QUALIFICATIONS :

The successful candidate will possess demonstrated experience developing and implementing comprehensive offensive and defensive IP strategies to improve competitiveness, preferably in the medical device sector.

The role requires strong knowledge of patent law, demonstrated significant experience building competitive patent portfolios and assessing competitor portfolios including identifying strategic insights from competitive intelligence, counseling clients on intellectual property issues, drafting and prosecuting strategic patent applications, freedom-to-operate or product clearance experience, IP contract experience, and experience with post-grant patent challenges in the US and Europe, preferably for medical device products.

Litigation experience and working knowledge of patent law in major jurisdictions outside of the US are strongly preferred.

Training / Experience Required

• Possess a Juris Doctor degree from an accredited law school, demonstrate a strong academic background, and be admitted to a US state bar (preferable CA) in good standing.
• 12+ years of experience of practicing patent law in AM100 law firm and / or large corporate legal department; prior in-house legal experience strongly preferred.
• Experience in medical device or health care sector strongly preferred.
• Experience influencing and managing internal and external stakeholders strongly preferred.
• Proven ability to lead attorneys and / or patent agents and / or paralegals, and to perform successfully in cross-functional teams, with the ability to lead and mentor.
• Ability to handle multiple projects in fast-paced environment and exercise sound commercial and legal judgment.
• Ability to independently handle highly complex matters with minimal supervision and understand which issues to elevate to senior management and appropriate timing for doing so.
• In addition to top-notch legal skills and a strong ethical center, excellent interpersonal, strategic thinking, communication, and organizational skills

LOCATIONS :

Location of position is Santa Clara, CA, Sylmar, CA, Abbott Park, IL, Chicago, IL, Columbus, Ohio, Plano, TX, Plymouth, MN, or St. Paul, MN.