Job Details

Division Counsel, Patent And IP

Company name


Organization Type


Job Type


Date Last Verified

Jan 28,2020

Valid Through

May 12,2020

Posted on

Mar 06,2019

Years of Experience

Min 5 yrs required


Alameda, CA, United States

Employment Type



Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent General
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Division Counsel, Patent And IP
The candidate will manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at ADC patent committee and Invention Review Board meetings; Conduct in-depth analyses of competitor products and IP portfolios; Conduct due diligence on potential mergers and acquisitions as well as freedom-to-operate assessments that drive strategic acquisitions and product development; Review work of outside counsel to ensure the work, methodology, strategy and costs meet Abbott’s expectations; Interact with and provide legal and strategic guidance to senior management, engineers and other functional organizational leadership; Collaborate closely with team members and strategically develop our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications in a diverse and growing technological field; Collaborate with commercial legal counsel, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters; Assist internal and external litigation counsel on IP litigation matters; Provide counseling and strategy options on marketing and promotional material; Participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices; Supervise exempt or non-exempt employees and manage employee career counseling, performance evaluation and other issues if required; Conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, contractor and vendor matters, and the overall development of intellectual property assets; Occasional domestic or foreign travel. Should have 10+ years of working as a patent attorney with work experience in prosecuting chemical, electrical, or mechanical and/or electro-mechanical patent applications with a recognized corporation and/or law firm. Must also have experience with PTAB proceedings as well as counseling clients on patent, trademark, trade secret, and copyright issues. Must have experience managing attorneys and 15+ years working as a patent attorney, as well as the same qualifications as Sr. Counsel. Must have Bachelor’s Degree. Should have Juris Doctor from accredited law school and admitted to a US state bar in good standing. Must have USPTO registration in good standing. Should have 5+ years of drafting and prosecuting patent applications, preferably in the area of medical devices and/or software and/or managing a medical device IP portfolio. Must have Freedom-to-operate or product clearance experience, preferably for medical device products. Bachelor’s Degree in engineering or science preferred. Ability to understand and comply with applicable FDA regulations and Company operating procedures, processes, policies, and tasks preferred. Working knowledge of patent laws in major jurisdictions outside of the US desired. Experience in patent office proceedings such as oppositions, reexaminations, or IPR proceedings preferred. Experience in patent or trademark litigation proceedings desired. Experience conducting due diligence a plus. Commercial industry experience an advantage. In-house experience preferred preferred.

Additional info

JOB ID: 30916123.

Company info

Hiring Coordinator
1360 South Loop Road
Alameda, CA 94502

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