Job Details

Senior Principal IP Legal Counsel

Company name

Organization Type

In-House

Job Type

Attorney

Date Last Verified

Oct 09, 2021

Valid Through

Jan 22, 2022

Posted on

Aug 22, 2021

Years of Experience

Min 8 yrs required

Location

Des Moines, IA, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Computer Science
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Mechanical
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Profile

Senior Principal IP Legal Counsel
The candidate will provide intellectual property legal support to the Surgical Innovations and Coronary Renal Denervation operating units (OUs). Will manage the creation, communication, and effective execution of the IP strategy and support the OU on all aspects of IP support. Develop and implement a global patent portfolio strategy; oversee the preparation and prosecution of patent applications and patent maintenance decisions in support of the global business strategy. Manage IP risk for the company's pipeline. Perform global freedom to operate evaluations, including preparing or obtaining opinions. Diligently manage the IP docket, leveraging corporate systems and resources. Provide support on patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositions. Protect the company's highest value R&D investments by managing invention disclosures and prioritizing filings with the highest level of impact. Demonstrate appropriate technical acumen. Analyze and develop actionable IP portfolios directed at competitors. Mine current portfolio and identify third party portfolios for possible acquisition. Perform claims analysis, construction, and drafting. Ensure ongoing awareness of competitors' products, activities, and IP portfolios. Consult on, draft, and negotiate agreements and contract clauses, as needed, to support business operations. Conduct benchmarking activities for IP portfolio valuation and budget allocations. Operate within budget constraints for outside counsel and third-party vendor spend. Perform IP due diligence for mergers and acquisitions with a solution-focused approach. Assist in the drafting and negotiation of agreements involving the transfer or licensing of intellectual property. Manage stakeholder expectations through proactive and clear communications. Direct brainstorming 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. 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. Educate key internal stakeholders on IP activities, competition, and outcomes of IP strategy execution. Develop strategic relationships with 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. Partner across multiple legal functions to coordinate and align on a cohesive legal strategy for the OU. Should have a J.D. degree from a nationally accredited law school with strong academic credentials. Bachelor's degree in mechanical engineering, computer science, or electrical engineering, or similar scientific disciplines would be preferred. Must have 8+ years of experience as an attorney in intellectual property law. Medical device experience is desired. Both in-house and law firm experience are assets. Must be licensed to practice in at least one state or the District of Columbia and be registered to practice before the USPTO. Knowledge of data science and AI is a plus.

Additional info

Requisition #: 21000M2G

Company info

Hiring Coordinator
Medtronic, Inc.
2811 Ingersoll Avenue
Des Moines, IA 50312-4012

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