Job Details

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 21, 2021

Years of Experience

Min 5 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 >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Mechanical
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Bioengineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Chemistry
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Principal IP Legal Counsel
The candidate will provide intellectual property legal support to the following operating units (OUs): Neuromodulation and Pelvic Health, Neurovascular, Structural Heart and Aortic, Surgical Innovations, and Cardiac Rhythm Management. As part of a collaborative team, will be 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. Deliver clear, concise, and actionable legal advice. Communicate intellectual property advice in a clear and succinct way to management. 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 company'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 the company'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, and 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.

Qualification and Experience

The candidate should have a J.D. degree from a nationally accredited law school with strong academic credentials. Bachelor's degree in biomedical engineering, mechanical engineering, chemical engineering, electrical engineering, or similar scientific disciplines is preferred. Must have 5+ years of experience as an attorney in intellectual property law discipline. Should be licensed to practice in at least one US state or the District of Columbia. Must be registered to practice before the USPTO. Medical device experience is preferred. Both in-house and law firm experience are assets. Proficiency in engineering, strong creative abilities, and scientific principles is ideal. An understanding of basic business concepts, strategies, and risks is a plus. Broad IP experience, including patent prosecution, freedom-to-operate, opinion preparation, licensing, and IP transactions is preferred. Litigation experience is desired. Data science and AI experience is a plus. The ability to develop compelling presentations, engage senior leaders with confidence, and distill complex information into business language is an asset.

Additional info

Requisition #: 21000M1V

Company info

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

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