Sr. Counsel- Intellectual Property

The Opportunity

This position works out of our location in Alameda, CA, in the Diabetes unit of our Medical Devices division.

As the Sr. Counsel, Intellectual Property, you’ll have the chance to strategically develop our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications.

What You’ll Work On

• Manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and Invention Review Board meetings.
• Participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices.
• Conduct due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development.
• Conduct in-depth analyses of competitor products and IP portfolios.
• Review outside counsel work to ensure the work, methodology, strategy and costs meet Abbott’s expectations.
• Collaborate with cross-functional teams and counsel a variety of clients on IP and other legal issues.
• Interact with and provide legal and strategic guidance to senior management, engineers and other functional organizational leadership.
• Collaborate 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.
• Assist internal and external litigation counsel on IP litigation matters.
• May supervise exempt or non-exempt employees, and manage employee career counseling, performance evaluation and other issues if required.
• Conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, contractor and vendor matters, and the overall development of intellectual property assets.
• Provide counseling and strategy options on marketing and promotional materials.
• Occasional domestic or foreign travel.

Required Qualifications

• Juris Doctor from accredited law school and admitted to a US state bar in good standing.
• USPTO registration in good standing.
• Strong academic background.
• BS in engineering or science.
• Minimum of 7 years working as a patent attorney and counseling clients on intellectual property issues.
• The successful candidate must have experience prosecuting mechanical, electro-mechanical, semiconductor and / or software patent applications as well as conducting agreement review and negotiations.
• Experience handling PTAB / EPO Oppositions and supporting patent litigation a plus.
• Significant freedom-to-operate or product clearance experience, preferably for medical device products.
• Excellent oral and written communication skills, interpersonal, facilitation, presentation, quantitative, analytical, organizational, and follow-up skills.
• Strong interpersonal skills and strategic thinking.
• Ability to understand and comply with applicable FDA regulations and company operating procedures, processes, policies, and tasks.

Preferred Qualifications

• Possess in-house IP experience, preferably in the medical device industry.
• At least 5 years of drafting and prosecuting patent applications in the area of medical devices and / or software and / or managing a medical device IP portfolio.
• Working knowledge of patent laws in major jurisdictions outside of the US.
• Government (USPTO or EPO) experience a plus.
2 days ago