Assistant General Counsel IP

Intuitive•Sunnyvale, CA

2d•$237,800 - $342,200•Onsite

About The Position

Intuitive Surgical is seeking an Assistant General Counsel, Intellectual Property, to lead and manage an active patent portfolio and provide broad intellectual property legal support. The role includes overseeing patent application preparation and prosecution and developing IP strategies to identify and protect valuable innovations. It also supports IP-related transactions, including NDAs and agreements concerning collaborations, product development, and suppliers, as well as strategic deals and investments such as M&A and licensing. This work includes IP due diligence, drafting and negotiating deal agreements, and advising on IP-related deal strategies. The position provides additional IP-related support in areas such as litigation, trademark protection, and trade secret protection. The attorney will work directly with engineers, scientists, management, clinical specialists, and executives to turn technology developments into effective IP protection and advance business objectives. The role also involves monitoring industry trends and advising on industry and regulatory developments, and developing and implementing operational and risk-management processes and procedures. The Assistant General Counsel, IP reports to the Associate General Counsel, IP Strategy, escalates issues as appropriate, and partners with other members of the legal team. The role represents Intuitive Surgical with external parties, including customers, regulators, affiliates, and industry trade groups. The position requires occasional travel and onsite work three days per week in the Sunnyvale, California office. The job posting also lists its Ways of Working as fully onsite.

Requirements

At least 10 years of intellectual property law experience as a practitioner in a law firm and/or in-house legal department, with substantial focus on patent prosecution.
Technical degree, professional background, and/or significant experience related to medical devices, robotics, mechanical engineering, or a related field; electrical engineering or other engineering specialties are also considered.
J.D. degree.
Membership in good standing with the California bar or eligibility for immediate registration as a Registered In House Counsel (RHIC).
Admission to practice before the United States Patent and Trademark Office.
Ability to assess legal and business opportunities and risks related to IP assets in support of M&A, investment opportunities, licensing, and purchasing or selling patent portfolios.
Exceptional communication and writing skills, including the ability to explain complex technical and legal concepts to varied audiences.
Ability to closely manage outside counsel and control matter costs.
Willingness to travel occasionally as required.

Nice To Haves

At least 2 years of in-house counsel experience, preferably including patent portfolio management and IP-related transactions.
Experience supporting litigation and due diligence is a plus.
Engaging, courageous, and self-directed, with a collaborative, fact-based approach.
Collaborative, resourceful, and adaptable, with the ability to anticipate needs and navigate a rapidly changing environment.
Intellectually curious and eager to learn new areas of law and technology and apply that knowledge effectively.

Responsibilities

Lead and manage an active patent portfolio, including patent application preparation, patent prosecution, and strategic development to identify and protect company innovations.
Support IP-related transactional matters, including NDAs and agreements for collaborations, product development, and suppliers.
Support strategic deals and investments, including M&A and licensing, through IP due diligence, drafting and negotiating deal agreements, and advising on IP-related deal strategies.
Provide additional IP legal support, including litigation support as needed and protection of trademarks and trade secrets.
Work directly with engineers, scientists, management, clinical specialists, and executives to translate technology developments into IP protection and support business objectives.
Monitor industry trends and advise on industry and regulatory developments.
Support the development and implementation of operational and risk-management processes and procedures.
Report to the Associate General Counsel, IP Strategy; escalate issues as appropriate and partner with legal team members.
Represent Intuitive Surgical professionally and strategically with customers, regulators, affiliates, and industry trade groups.
Travel occasionally as required.