Counsel, Intellectual Property

2 months ago

Alameda, United States Abbott Laboratories Full time

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.

At Abbott, you can do work that matters, grow, and learn, care for yourself and family, be your true self and live a full life. Youâll also have access to:

  • Career development with an international company where you can grow the career you dream of.
  • Free medical coverage for employees* via the Health Investment Plan (HIP) PPO
  • An excellent retirement savings plan with high employer contribution
  • Tuition reimbursement, the Freedom 2 Save student debt program and FreeU education benefit - an affordable and convenient path to getting a bachelorâs degree.
  • A company recognized as a great place to work in dozens of countries around the world and named one of the most admired companies in the world by Fortune.
  • A company that is recognized as one of the best big companies to work for as well as a best place to work for diversity, working mothers, female executives, and scientists.

 

The Opportunity

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


As the Counsel, Intellectual Property, youâll 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 Youâll 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 Abbottâs 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.

 

Apply Now

 

* Participants who complete a short wellness assessment qualify for FREE coverage in our HIP PPO medical plan. Free coverage applies in the next calendar year.

 

Learn more about our health and wellness benefits, which provide the security to help you and your family live full lives:  www.abbottbenefits.com

 

Follow your career aspirations to Abbott for diverse opportunities with a company that can help you build your future and live your best life. Abbott is an Equal Opportunity Employer, committed to employee diversity.

 

Connect with us at www.abbott.com, on Facebook at www.facebook.com/Abbott and on X (formerly Twitter) @AbbottNews and @AbbottGlobal.



The base pay for this position is $144,100.00 â $288,300.00. In specific locations, the pay range may vary from the range posted.

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