Senior Intellectual Property Counsel

21 hours ago

Santa Clara, California, United States Abbott Laboratories Full time
Job Title: Sr. Counsel, Intellectual Property

Abbott Laboratories 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.

The Opportunity

This position works out of our location in Santa Clara, CA, in the Vascular (AV) unit of our Medical Devices division. The position will focus primarily on Abbott's product lines for the treatment of cardiac and vascular disease as well as related digital solutions. The position may also serve other Abbott business units on occasion.

Key Responsibilities

  • Manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, and 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.

Requirements

  • 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.
  • The successful candidate must have 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 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 8 years of drafting and prosecuting patent applications in the area of medical devices and/or managing a medical device IP portfolio.
  • Experience drafting and prosecuting chemical or polymer chemistry patent applications.
  • Advanced degree (MSc, PhD) in engineering.
  • Working knowledge of patent laws in major jurisdictions outside of the US.
  • Government (USPTO or EPO) experience a plus.

About Abbott Laboratories

Abbott Laboratories is an Equal Opportunity Employer, committed to employee diversity. We offer a comprehensive benefits package, including health, dental, and vision insurance, 401(k) matching, and paid time off. We are an equal opportunity employer and welcome applications from diverse candidates. Follow us on social media to learn more about our company culture and benefits.

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