Intellectual Property Counsel III, Mounds View, MN or Lafayette, CO

Medtronic•Mounds View, MN

2d•$199,200 - $298,800•Hybrid

About The Position

The Senior Principal IP Legal Counsel will provide intellectual property legal support to the Medtronic Cardiac Ablations Solutions business. This highly visible role is responsible for the creation and execution of a global IP strategy, developing and maintaining a strategic patent portfolio, providing counseling and education to product development teams, performing due diligence for merger and acquisition opportunities, drafting and negotiating complex agreements, and advising business clients on various intellectual property matters. The ideal candidate is a trusted advisor who delivers clear, concise, and actionable legal guidance and communicates complex intellectual property concepts with confidence to technical and non-technical audiences. Medtronic fosters an inclusive culture where diverse perspectives lead to innovation.

Requirements

Juris Doctor (J.D.) from a nationally accredited law school with strong academic credentials
8+ years of experience as an Attorney in intellectual property law discipline
Licensed to practice in at least one US state or the District of Columbia
Registered to practice before the U.S. Patent and Trademark Office

Nice To Haves

Bachelor’s degree in engineering, computer science, or similar scientific disciplines
Medical device experience
Both in-house and law firm experience
Excellent judgment supported by strong strategic and analytical thinking.
Ability to prioritize across multiple tasks and demands while remaining organized.
Able to thrive in ambiguity and make decisions amidst multiple, competing demands and activities.
Proficiency in engineering and scientific principles
Understanding of basic business concepts, strategies, and risks
Broad intellectual property experience, including patent prosecution, litigation, trademark, contracts, freedom-to-operate, opinion preparation, licensing, and intellectual property negotiations.
Software, algorithms, data science and AI experience
Ability to develop compelling presentations, engage senior leaders with confidence, and distill complex information into business language
Strong commitment to company values

Responsibilities

Execute all aspects of the creation, protection, and management of intellectual property assets.
Manage a global patent portfolio in support of a global business through management of patent preparation and prosecution by outside counsel, global filing strategy, and patent maintenance decisions.
Operate within budget constraints for outside counsel and third-party vendor spend.
Interface with the business to develop and communicate strategies that define priorities and objectives for a global intellectual property strategy.
Manage internal invention disclosure processes to maximize intellectual property protection for Medtronic’s key technologies.
Leverage existing patent applications to develop intellectual property assets in a quickly evolving competitive landscape.
Support management of intellectual property risk for Medtronic’s pipeline, including performing global freedom-to-operate evaluations and overseeing the preparation of opinions of counsel.
Support patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositions.
Support IP due diligence for mergers and acquisitions with a pragmatic, business-oriented mindset.
Draft and negotiate contracts with a focus on intellectual property considerations.
Direct, develop, and analyze thoughtful patent searching strategies for patentability, invalidity, and competitive landscape.
Ensure ongoing awareness of competitors’ products, activities, and intellectual property portfolios.
Partner closely with business leaders in marketing, business development, and research and development to provide clear advice and counsel.
Assess competitive intelligence by working with cross-functional partners to identify opportunities and risks.
Collaborate with other functions to ensure compliance in heavily regulated and global environments.
Direct brainstorms to prioritize protection of key technologies and therapies, working closely with research and development teams.
Provide training and counseling to internal stakeholders on intellectual property activities, competition, and outcomes relating to intellectual property strategy.
Prioritize resources and manage outside counsel to efficiently deliver key objectives on time and within budget.
Partner across the intellectual property team to share and leverage insights and best practices.
Partner with commercial legal to provide strategic advice and develop a cohesive legal strategy for the business.
Model the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right way.