Senior Intellectual Property Counsel

3 weeks ago

Santa Clara, California, United States Abbott Laboratories Full time

About the Role

Abbott Laboratories is seeking a highly skilled Senior Intellectual Property Counsel to join our team. As a key member of our Medical Devices division, you will play a critical role in developing and managing our worldwide patent portfolio.

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 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.

About Abbott Laboratories

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. Our 114,000 colleagues serve people in more than 160 countries.

Why Join Us?

At Abbott Laboratories, we offer a dynamic and supportive work environment that fosters growth and development. We are committed to employee diversity and provide opportunities for professional advancement. Join our team and be part of a company that can help you build your future and live your best life.

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