Intellectual Property Law Expert for Medical Devices
2 days ago
As a global leader in healthcare, Abbott Laboratories empowers people to live more fully at all stages of life. Our diverse portfolio spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals, and branded generic medicines.
We have a talented workforce of over 114,000 colleagues serving people in more than 160 countries worldwide. Our mission is to provide innovative solutions that improve lives and advance healthcare.
The OpportunityThis position is based out of our location in Santa Clara, CA, within the Vascular (AV) unit of our Medical Devices division. The role will primarily focus on Abbott's product lines for the treatment of cardiac and vascular disease as well as related digital solutions.
You may also have the opportunity to serve other Abbott business units on occasion.
Job DescriptionAs 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.
- 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 various 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.
- Ongoing education and professional development are encouraged.
To be successful in this role, you will need:
- Juris Doctor from an accredited law school and admitted to a US state bar in good standing.
- USPTO registration in good standing.
- Strong academic background.
- BS in engineering (mechanical, chemical, or biomedical).
- Minimum of 10 years working as a patent attorney and counseling clients on intellectual property issues.
- Experience drafting and prosecuting mechanical and/or electro-mechanical patent applications as well as conducting agreement review and negotiations.
- Experience handling PTAB/EPO Oppositions and supporting patent litigation is 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.
$164,900 - $329,700 per year, depending on specific locations.
BenefitsAt Abbott Laboratories, we offer a comprehensive benefits package that includes:
- A competitive salary range.
- A generous pension plan.
- Comprehensive health insurance.
- A wide range of employee discounts and perks.
- Professional development opportunities.
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