Sr Counsel, Intellectual Property

Abbott • Alameda, CA

2d • $172,000 - $344,000 • Onsite

About The Position

Our location in Alameda, CA currently has an opportunity for a Senior Counsel, Intellectual Property. 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. Technical Skills: The successful candidate will possess 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. A degree in chemistry or related field is a plus. Relevant experience with software/digital products is a plus. 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. Core job responsibilities include: In close collaboration with various levels of the Operating Division, 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; and Provide advice and strategic options for marketing and promotional material.

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

• A degree in chemistry or related field is a plus.
• Relevant experience with software/digital products is a plus.
• 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

• In close collaboration with various levels of the Operating Division, 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

Benefits

• Training and career development, with onboarding programs for new employees and tuition assistance
• Financial security through competitive compensation, incentives and retirement plans
• Health care and well-being programs including medical, dental, vision, wellness and occupational health programs
• Paid time off
• 401(k) retirement savings with a generous company match
• The stability of a company with a record of strong financial performance and history of being actively involved in local communities

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Education Level: Ph.D. or professional degree
• Number of Employees: 5,001-10,000 employees