Strategic IP Counsel

2 days ago


Santa Clara, California, United States Abbott Laboratories Full time
About Us

Abbott Laboratories is a leading global healthcare company 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.

Salary

The estimated salary for this position is $261,400 - $423,200 per year, depending on location.

Job Description

We are 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.

Key Responsibilities:
  • 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;
  • Conducting due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development.
Requirements

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.

Qualifications:
  • 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.
Benefits

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: We are committed to employee diversity and offer diverse opportunities with a company that can help you build your future and live your best life.



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