Division Counsel- Intellectual Property Strategy

3 weeks ago

Santa Clara, California, United States Abbott Laboratories Full time
Job Description

Abbott Laboratories is 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
  • Strategically develop and execute offensive and defensive IP strategies to support business objectives, including building competitive patent portfolios.
  • Conduct in-depth analyses of competitor products and IP portfolios.
  • Monitor and evaluate competitor IP portfolios and identify strategic insights.
  • 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.
  • Develop and conduct 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.
  • Conduct due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development.
Requirements
  • Demonstrated experience developing and implementing comprehensive offensive and defensive IP strategies to improve competitiveness, preferably in the medical device sector.
  • 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.
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 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.
Location

Location of position is Santa Clara, CA, Sylmar, CA, Abbott Park, IL, Chicago, IL, Columbus, Ohio, Plano, TX, Plymouth, MN, or St. Paul, MN.

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