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ProfileDivision Counsel, Patent and Intellectual Property The candidate will manage all aspects of intellectual property for a diabetes product portfolio that includes hardware, software, digital platforms and more. 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 firm'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 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 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.
Qualification and Experience
The candidate must have 10 years 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 Senior Counsel. Must have Bachelor’s Degree. Should have Juris Doctor from accredited law school and admitted to a US state bar in good standing. USPTO registration in good standing is required. Must 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. Bachelor’s Degree in engineering or science is preferred. Ability to understand and comply with applicable FDA regulations and Company operating procedures, processes, policies, and tasks is preferred. Working knowledge of patent laws in major jurisdictions outside of the US is preferred. Experience in patent office proceedings such as oppositions, reexaminations, or IPR proceedings is preferred. Experience in patent or trademark litigation proceedings is preferred. Experience conducting due diligence is preferred. Commercial industry experience is preferred. In-house experience preferred.
JOB ID: 30890933
1360 South Loop Road
Alameda, CA 94502