Intellectual Prop Counsel III

Medtronic•Minneapolis, MN

About The Position

The Senior Principal IP Legal Counsel will become a member of the Medtronic IP Mergers & Acquisitions Center of Excellence (“IP M&A COE”) legal team, which leads and sets best practices for IP-related transactions and due diligence processes across the enterprise. The position will provide IP advice and support to the Corporate Development and Ventures teams, as well as operating unit legal teams, in connection with M&A projects, divestitures and structured investments. The position reports to the IP Senior Director of the IP M&A COE. The ideal candidate is a highly motivated self-starter with strong leadership skills who is comfortable advising senior executives and proactively providing strategic IP counseling in support of complex, high-stakes M&A deals in a fast-paced environment. The role focuses on assessing IP landscapes to provide counseling on early-stage opportunities, implementing and executing IP-specific strategies for due diligence investigations and contract provisions for business development and M&A transactions and assists in managing transactions to reach strategic objectives within budget. This work primarily involves partnering closely with outside and in-house M&A counsel and operating unit IP counsel; engaging in and driving early evaluation and resolution of IP issues uncovered in due diligence for transactions; reviewing, revising and negotiating IP-related provisions of M&A transactions; providing advice and counsel to operating units and business development teams on issues related to IP risk assessment and mitigation through effective contracting. We believe that when people from different cultures, genders, and points of view come together, innovation is the result — and everyone wins. Medtronic walks the walk, creating an inclusive culture where you can thrive.

Requirements

Juris Doctor from a recognized, accredited U.S. Law School.
Licensed to practice in at least one state or the District of Columbia.
8+ years of relevant in-house and law firm experience in intellectual property law, including substantial experience conducting and/or overseeing IP due diligence assessments, as well as drafting and negotiating IP-related provisions of M&A transactions and license agreements.

Nice To Haves

Bachelor’s degree or higher in engineering or other technical or scientific field.
Registered to practice before the U.S. Patent and Trademark Office (not essential, but strongly preferred).
Broad intellectual property experience, including patent prosecution, litigation, trademark, contracts, freedom-to-operate, opinion preparation, licensing, and intellectual property negotiations.
IP M&A transactional experience that includes: critically evaluating contractual changes proposed by another party and devising responses that protect client interests and achieve business objectives; tailoring IP-provisions of M&A agreements to mitigate IP risks or otherwise account for relevant findings from due diligence investigations; experience with effectively conducting negotiations including advising clients on negotiation strategies; and knowledge of IP issues that typically arise in connection with M&A transactions and common ways to resolve them.
Experience working with clients in the medical device industry.
Both in-house and law firm experience
Strong attention to detail, organizational skills, and client service mindset.
Excellent judgment, strong strategic and analytical thinking, and ability to work independently and collaboratively on multiple projects at the same time in a face-paced environment.
Excellent written, verbal and listening communications skills, including the ability to develop compelling presentations, engage senior leaders with confidence, and distill complex technical and legal information into business language.
Experience in managing a significant workload, with the ability to juggle multiple projects simultaneously and prioritize across multiple tasks while remaining organized.

Responsibilities

Negotiate, draft, analyze and revise complex IP and technology agreements, including licenses, joint ventures and collaborations, as well as IP-related provisions of M&A and divestiture agreements.
Evaluate and analyze intellectual property portfolios, including patents, trademarks, copyrights, and trade secrets of target companies.
Identify and analyze potential IP litigation and other IP risks related to the potential transaction, with proactive counseling on mitigations in view of the same
Advise senior legal leadership, business development teams and operating unit business leaders on IP risks and issues, including infringement, validity, freedom-to-operate and ownership.
Collaborate with other attorneys (including operating unit IP and commercial attorneys, COE attorneys and outside counsel) and professionals in cross-functional teams to support M&A and business development activities and procedures at Medtronic.
Forge strong relationships with deal teams and other clients across Medtronic by proactively providing strategic, business-oriented IP advice and services.
Manage multiple projects simultaneously and prioritize tasks effectively to achieve key deliverables on time and on budget.
Monitoring changes to the evolving competitive landscape for medical device and healthcare technology.
Model the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right way.

Benefits

Health, Dental and vision insurance
Health Savings Account
Healthcare Flexible Spending Account
Life insurance
Long-term disability leave
Dependent daycare spending account
Tuition assistance/reimbursement
Simple Steps (global well-being program)
Incentive plans
401(k) plan plus employer contribution and match
Short-term disability
Paid time off
Paid holidays
Employee Stock Purchase Plan
Employee Assistance Program
Non-qualified Retirement Plan Supplement (subject to IRS earning minimums)
Capital Accumulation Plan (available to Vice Presidents and above, or subject to IRS earning minimums)