Senior Counsel - IP (AI)

Abbott•Alameda, CA

14h•Onsite

About The Position

Abbott Medical Devices is seeking a Senior Counsel for its Diabetes Care business. The position will take a team-oriented approach to managing IP issues by partnering with the Diabetes Care business (“Operating Division”). The successful candidate will be responsible for managing and directing a diversity of intellectual property issues within our Diabetes Care business. We are looking for an individual who aspires to make valuable IP contributions to the broader organization.

Requirements

7+ years of experience practicing patent law in a law firm or a corporation
Ability to handle multiple projects in fast-paced environment and exercise sound commercial and legal judgment
In addition to top-notch legal skills and excellent interpersonal, strategic thinking, communication, and organizational skills
JD from an accredited law school, admitted to and in good standing with (i) a U.S. state bar and (ii) the USPTO

Nice To Haves

Strong knowledge of patent law and have a history of success advising clients on intellectual property issues, building competitive IP portfolios, and clearing products in the Medical Devices or similar space.
Experience patenting AI, Machine Learning, Software, and Digital inventions in the Medical Device space is preferred.
A working knowledge of patent law in major jurisdictions outside the U.S., experience with adversarial USPTO and/or European Patent Office proceedings, patent litigation experience and transactional experience are preferred.

Responsibilities

Strategically developing our worldwide patent portfolio, including directing and managing domestic and OUS outside counsel to prepare and prosecute patent applications that are aligned with strategic objectives.
Review outside counsel work product to ensure the methodology, strategy and costs meet Abbott’s expectation.
Manage and direct pipeline portfolio by soliciting/developing invention disclosures, conducting inventor interviews and presenting disclosures at cross functional patent committee meetings to align future filings with strategic direction.
Conduct in-depth analyses of competitor products and IP portfolios.
Conduct employee training on protecting Abbott innovations, developing intellectual property assets and best practices for maintaining confidential business information.
Assist internal and external litigation counsel on IP litigation matters.
Conduct due diligence on potential mergers, acquisitions and investment opportunities.
Collaborate with commercial legal counsel, including preparing and reviewing license agreements, various standard agreements and counseling the Operating Division regarding IP transactional matters.
Provide advice and strategic options for marketing and promotional material.