Division Counsel, IP

4 weeks ago

Santa Clara, 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.

Primary Job Function

Abbott is currently seeking an experienced IP attorney to join our highly effective team to lead and manage all aspects of intellectual property for our Vascular business (AV) for the diagnosis and treatment of cardiac and vascular diseases.  We take a team-oriented approach to managing a large IP portfolio and deeply integrating into our diverse business divisions.

Technical Skills:

The successful candidate will possess strong knowledge of patent law and demonstrated significant experience counseling clients on intellectual property issues, drafting and prosecuting patent applications, freedom-to-operate or product clearance experience, preferably for medical device products and experience in PTAB proceedings, such as oppositions, reexaminations, or IPR proceedings and patent litigation, IP contract experience, preferably experience with data rights and API agreements. Working knowledge of patent law in major jurisdictions outside of the US is preferred. Core job responsibilities include:

  • In close collaboration with other IP team members, strategically developing our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications;
  • Reviewing outside counsel work to ensure the work, methodology, strategy and costs meet Abbottâs expectations;
  • 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;
  • Conducting 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;
  • Providing counseling and strategy options on marketing and promotional material;
  • Conducting due diligence on potential mergers and acquisitions and freedom-to-operate (FTO) assessments that drive strategic acquisitions and product development; and
  • Managing invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and Invention Review Board meetings; and
  • Conducting in-depth analyses of competitor products and IP portfolios.

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 in managing outside counsel spend/budget/forecasting strongly preferred
  • Proven ability to lead attorneys 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

Other Job Details

  • Location of Position
    • Santa Clara, Ca
  • Geography Support
    • Global
  • Reporting/Department
    • Position will report to Divisional Vice President, IP, Medical Device, within the Patent/Trademark Department
  • Managerial/Supervision Duties
    • Division Counsel will manage a team of lawyers, IP professional, and support staff who have responsibility for Vascular's patent portfolio and FTO analysis.
  • Travel: Occasional  

Critical Success Factors:

  • Good Judgment:  Demonstrate expertise and sound judgment, understand how assigned responsibilities support Abbottâs business objectives, and be able to provide practical, risk-balanced advice based upon a thorough understanding of the scope of an issue, taking full advantage of internal networks and external intelligence.
  • Collaboration:  Firm understanding of available legal, functional, and business resources and ability to integrate information from a number of sources to achieve business results, including breaking down boundaries to create alignment as necessary, in a complex, global, matrixed environment.
  • Anticipation:  Holistic, big picture thinker, who anticipates changes in law, enforcement, and/or business objectives and adapts approach as necessary to manage risks effectively and mitigate issues before they arise.
  • Influencing Skills:  Build strong relationships with business partners to tactfully influence and gain their support to drive desired outcomes. Effectively represent Abbott externally and resolve legal issues using negotiation skills and legal expertise/engage in external influencing efforts.

Employer of Choice:

Through numerous local, national, and international accolades, Abbott is regarded as an employer of choice for our commitment to workplace excellence. Our employees are given the tools to succeed, lead and grow, with challenging opportunities and work that makes a difference. Through our diverse healthcare businesses, we connect people and potential in ways that no other company can. Discover a world of opportunities at Abbott.

Who We Are:

We are legal professionals and business partners, and we use our expertise and judgment to guide Abbottâs businesses through the challenges that come with operating in complex global environments.

What We Offer:

Abbott Legal provides meaningful and challenging work on a global scale. We are a dynamic organization and we develop our employees to meet the evolving needs of the company. 

How We Work:

We are collaborative, curious, and pragmatic. We value diversity of background, experience, and thought in our teams. We are expected to be holistic thinkers who see the big picture, and make thoughtful, informed decisions.



The base pay for this position is $211,600.00 â $423,200.00. In specific locations, the pay range may vary from the range posted.

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