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Years of Experience
Date Last Verified
ProfileDivision Counsel Duties: In close collaboration with other team members, 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; participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices; manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at ADC patent committee and Invention Review Board meetings; conduct due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development; conduct in-depth analyses of competitor products and IP portfolios; review outside counsel work to ensure the work, methodology, strategy and costs meet Abbott’s expectations; collaborate with cross-functional teams and counsel a variety of clients within the diabetes business on IP and other legal issues; interacts with and provides legal and strategic guidance to senior management, engineers and other functional organizational leadership; 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; 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; provide counseling and strategy options on marketing and promotional material; occasional domestic or foreign travel.
Qualification and Experience
Qualifications: BS in engineering or science; JD Degree from accredited law school and admitted to a US state Bar in good standing; USPTO registration in good standing; Strong academic background; Requirements for Sr. Counsel: 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 regionally or nationally recognized law firm and/or corporation. Also must have experience with in PTAB proceedings. Experience counseling clients on patent, trademark, trade secret, and copyright issues. 15+ years working as a patent attorney with same qualifications as Sr. Counsel plus experience managing people; Excellent oral and written communication skills, interpersonal, facilitation, presentation, quantitative, analytical, organizational, and follow-up skills; Strong interpersonal skills and strategic thinking; Ability to understand and comply with applicable FDA regulations and Company operating procedures, processes, policies, and tasks. Preferred: Significant freedom-to-operate or product clearance experience, preferably for medical device products; 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; Working knowledge of patent laws in major jurisdictions outside of the US; Experience in patent office proceedings such as oppositions, reexaminations, or IPR proceedings; Experience in patent or trademark litigation proceedings; Experience conducting due diligence; Commercial experience; In-house experience a plus.
JOB ID: 30879105
1360 South Loop Road
Alameda, CA 94502