Job Details

Patent Counsel Ii

Company name

Medtronic, Inc.

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 5 yrs required

Location

Mounds View, MN

Date Last Verified

Feb 16,2018

Posted on

Feb 08,2018
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Electrical Engineering
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Life Sciences >> Biology
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Patent Counsel II The candidate will provide intellectual property legal support to the Mechanical Circulatory Support (MCS) business within company’s Cardiac Rhythm & Heart Failure (CRHF) division. The Patent Counsel II will be responsible for handling intellectual property (IP) matters for company’s MCS business, including: Interfacing with business partners, including the R&D and Business Development teams, to develop and implement comprehensive, global IP strategies aligned with business objectives; Managing the MCS patent portfolio, which will include self-performed patent preparation and prosecution work as well as overseeing work performed by outside counsel; Managing the invention disclosure evaluation process for the business; Conducting freedom-to-practice evaluations and related patent searches; Proactively monitoring competitor products and related IP; Performing infringement investigations and invalidity analyses, and preparing or obtaining appropriate legal opinions; Performing IP due diligence for mergers/acquisitions; Providing support and management on patent litigation, including early pre-suit assessments; Managing patent oppositions, reexams, inter partes reviews (IPRs) and other post-grant proceedings; Assisting in the drafting and negotiation of agreements involving the transfer or licensing of intellectual property; Providing strategic guidance and counseling to MCS management on key IP issues affecting the business.

Qualification and Experience

The candidate should have J.D. from a recognized, accredited U.S. law school and licensed to practice in at least one state or the District of Columbia with the ability to be admitted in Minnesota; registered to practice before the U.S. Patent and Trademark Office. Should have Bachelor's Degree in Electrical, Electro-Mechanical, Mechanical, Computer or Biomedical Engineering, Physics or similar scientific discipline. Must have 5+ years of IP experience. Should have patent preparation and prosecution skills experience, ideally with a medical device company or with an independent law firm with a strong practice geared toward medical devices. Broad IP experience is preferred including, in addition to US patent preparation and prosecution, experience with global patent issues and practices, litigation, transactions and transactional due diligence.

Company info

Hiring Coordinator
Medtronic, Inc.
8200 Coral Sea Street NE
Mounds View, MN 55112