Sr. Principal IP legal Counsel - Diabetes

Medtronic•Northridge, CA

11d

About The Position

At Medtronic you can begin a life-long career of exploration and innovation, while helping champion healthcare access and equity for all. You’ll lead with purpose, breaking down barriers to innovation in a more connected, compassionate world. A Day in the Life The Senior Principal IP Legal Counsel will provide intellectual property legal support to the Medtronic Diabetes Operating Unit. The Senior Principal IP Legal Counsel is responsible for implementing global IP strategies, developing strategic IP portfolios for medical technologies and supporting product development and research through proactive IP counseling and education, supporting M&A activities, supporting related licensing transactions, and advising clients in R&D and the business on various IP matters. The individual will be responsible for delivering clear, concise, and actionable legal advice. Comfort and confidence in communicating intellectual property advice in a clear and succinct way to management is essential. This position is an exciting opportunity to work with Medtronic's Diabetes business. Medtronic has announced its intention to separate the Diabetes division to promote future growth and innovation within the business and reallocate investments and resources across Medtronic, subject to applicable information and consultation requirements. This separation provides our team with a bold opportunity to unleash our potential, enabling us to operate with greater speed and agility. As a separate entity, we anticipate leveraging increased investments to drive meaningful innovation and enhance our impact on patient care. Protect Medtronic’s Pipeline and Ability to Compete Execute all aspects of creation and management of intellectual property Prepare and prosecute a patent portfolio worldwide in support of global business and IP strategies. Tasks include self-directed work, managing and reviewing outside counsel work, diligently managing dockets using the corporate docketing systems, and implementing patent maintenance decisions Interface with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectives Protect Medtronic’s highest value R&D investments by managing invention disclosures and prioritizing filings with the highest level of impact Leverage existing patent applications (i.e., mine) to develop IP assets that accommodate an evolving competitive landscape Support management of IP risk for Medtronic’s pipeline, including performing global freedom-to-operate evaluations and overseeing the preparation of opinions of counsel when necessary Provide support on patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositions Support IP due diligence for mergers/acquisitions with solution-focused approach Assist in drafting and negotiating IP agreements, such as, for example, patent licensing agreements, joint-development agreements, material transfer agreements, acquisition agreements Determine if invention should be protected as a patent or trade secret Direct, develop, and analyze thoughtful patent searching strategies for patentability, invalidity, and competitive landscape Ensure ongoing awareness of competitors’ products, activities, and IP portfolio Operate within budget constraints for outside counsel and third-party vendor spend Be a Strategic and Inclusive IP Partner Develop strategic relationships with operating unit leaders, marketing, business development, and R&D to integrate IP into the overall operating unit strategy and provide IP advice and counsel Manage stakeholder expectations through proactive and clear communications Direct brainstorms and make filing decisions to ensure expansive protection of new technologies and therapies, including ensuring coverage of whitespace Partner with portfolio strategy, upstream marketing, business development, and competitive intelligence functions to perform landscaping activities for future opportunities Educate key internal stakeholders on IP activities, competition, and outcomes of IP strategy execution Develop strategic relationships and manage outside counsel to accomplish key deliverables on time and on budget Partner across the IP team to share and leverage insights and best practices Partner with IP COEs (litigation, BD, trademarks, data/AI, and patent portfolio strategy) to deliver optimal outcomes to the operating unit Partner with operating unit commercial legal to coordinate and align on a cohesive legal strategy for the operating unit Model the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right way

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, Physics, Chemistry or similar scientific disciplines
Medical device experience
Experience with pumps and sensors
Both in-house and law firm experience
Excellent judgment, strong strategic and analytical thinking and ability to work on multiple projects at the same time
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, strong creative abilities, and scientific principles.
Understanding of basic business concepts, strategies, and risks
Broad IP experience, including patent prosecution, freedom-to-operate, opinion preparation, licensing, and IP transactions
Litigation experience
Software, Algorithms, Data science and AI experience
Ability to develop compelling presentation, engage senior leaders with confidence, and distill complex information into business language
Possess a strong commitment to company values

Responsibilities

Execute all aspects of creation and management of intellectual property
Prepare and prosecute a patent portfolio worldwide in support of global business and IP strategies.
Tasks include self-directed work, managing and reviewing outside counsel work, diligently managing dockets using the corporate docketing systems, and implementing patent maintenance decisions
Interface with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectives
Protect Medtronic’s highest value R&D investments by managing invention disclosures and prioritizing filings with the highest level of impact
Leverage existing patent applications (i.e., mine) to develop IP assets that accommodate an evolving competitive landscape
Support management of IP risk for Medtronic’s pipeline, including performing global freedom-to-operate evaluations and overseeing the preparation of opinions of counsel when necessary
Provide support on patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositions
Support IP due diligence for mergers/acquisitions with solution-focused approach
Assist in drafting and negotiating IP agreements, such as, for example, patent licensing agreements, joint-development agreements, material transfer agreements, acquisition agreements
Determine if invention should be protected as a patent or trade secret
Direct, develop, and analyze thoughtful patent searching strategies for patentability, invalidity, and competitive landscape
Ensure ongoing awareness of competitors’ products, activities, and IP portfolio
Operate within budget constraints for outside counsel and third-party vendor spend
Develop strategic relationships with operating unit leaders, marketing, business development, and R&D to integrate IP into the overall operating unit strategy and provide IP advice and counsel
Manage stakeholder expectations through proactive and clear communications
Direct brainstorms and make filing decisions to ensure expansive protection of new technologies and therapies, including ensuring coverage of whitespace
Partner with portfolio strategy, upstream marketing, business development, and competitive intelligence functions to perform landscaping activities for future opportunities
Educate key internal stakeholders on IP activities, competition, and outcomes of IP strategy execution
Develop strategic relationships and manage outside counsel to accomplish key deliverables on time and on budget
Partner across the IP team to share and leverage insights and best practices
Partner with IP COEs (litigation, BD, trademarks, data/AI, and patent portfolio strategy) to deliver optimal outcomes to the operating unit
Partner with operating unit commercial legal to coordinate and align on a cohesive legal strategy for the operating unit
Model the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right way

Benefits

Medtronic offers a competitive Salary and flexible Benefits Package
We offer a wide range of benefits, resources, and competitive compensation plans designed to support you at every career and life stage.
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).