Counsel, Intellectual Property

Abbott

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profile Job Location:

Saint Paul, MN - USA

profile Monthly Salary: $ 129300 - 258700
Posted on: 17 hours ago
Vacancies: 1 Vacancy

Job Summary

Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare with leading businesses and products in diagnostics medical devices nutritionals and branded generic medicines. Our 114000 colleagues serve people in more than 160 countries.

JOB DESCRIPTION:

Working at Abbott

At Abbott you can do work that matters grow and learn care for yourself and family be your true self and live a full life.Youllalso have access to:

  • Career development with an international company where you can grow the career you dream of.

  • Free medical coverage for employees* via the Health Investment Plan (HIP) PPO

  • An excellent retirement savings plan with high employer contribution

  • A company recognized asa great placeto work in dozens of countries around the world and named one of the most admired companies in the world by Fortune.

  • A company that is recognized as one of the best big companies to work for

The Opportunity

This positioncanwork out of our location inPlymouth MN orSt. Paul MN in theElectrophysiologybusinessunitof our Medical Devices division.The position will focus primarilyonAbbotts product linesforthetreatment of cardiacarrhythmias as well as related digital solutions. The position may also serve other Abbott business units on occasion.

WhatYoullWork On

  • Manage invention disclosures including collecting and screening disclosures conducting inventor interviews presenting disclosures at patent committee and Invention Review Board meetings.

  • Participate in the effective management of our external budget including monthlyquarterlyand annual budget reviews quarterly forecasting and reviewing outside counsel invoices.

  • 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 workmethodologystrategyand costs meet Abbotts expectations.

  • Collaborate with cross-functional teams andcounsela variety of clients on IP and other legal issues.

  • Interact with and provide legal and strategic guidance to senior managementengineersand 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 businessregardingIP transactional matters.

  • Assistinternal and external litigation counsel on IP litigation matters.

  • May supervise exempt or non-exempt employees and manage employee career counseling performance evaluation and other issues if.

  • Conduct employee training sessions on the protection of innovations through the patent process best practices formaintainingconfidential business information contractor and vendor matters and the overall development of intellectual property assets.

  • Provide counseling and strategy options on marketing and promotional materials.

  • Occasional domestic or foreign travel.

Required Qualifications

  • Juris Doctor fromaccreditedlaw school and admitted to a US state bar in good standing.

  • USPTO registration in good standing.

  • Strong academic background.

  • BS in engineering(electrical computermechanicalchemicalor biomedical).

  • Minimum of5years working as a patent attorney and counseling clients on intellectual property issues.

  • The successful candidate must have experiencedrafting andprosecuting electro-mechanicalelectrical and/or softwarepatent applications as well as conducting agreement review and negotiations.

  • Significant freedom-to-operate or product clearance experience preferably for medical device products.

  • 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 andcomply withapplicable FDA regulations and company operating procedures processes policies and tasks.

Preferred Qualifications

  • Possess in-house IP experience preferably in the medical device industry.

  • Experience handling PTAB/EPO Oppositions and supporting patentlitigationa plus.

  • At least5years of drafting and prosecuting patent applicationsin the area ofmedical devices and/or managing a medical device IP portfolio.

  • Working knowledge of patent laws in majorjurisdictionsoutside of the US.

  • Government (USPTO or EPO) experience a plus.

* Participants who complete a short wellness assessment qualify for FREE coverage in our HIP PPO medical plan. Free coverage applies in the next calendar year.

Learn more about our health and wellness benefits which provide the security to help you and your family live full lives:

Follow your career aspirations to Abbott for diverse opportunities with a company that can help you build your future and live your best life. Abbott is an Equal Opportunity Employer committed to employee diversity.

The base pay for this position is

$129300.00 $258700.00

In specific locations the pay range may vary from the range posted.

JOB FAMILY:

Operations & Business Support

DIVISION:

GENC General Counsel

LOCATION:

United States > Minnesota > Plymouth : 5050 Nathan Lane N

ADDITIONAL LOCATIONS:

United States > Minnesota > St. Paul > Tech Center : One St Jude Medical Drive

WORK SHIFT:

Standard

TRAVEL:

Yes 10 % of the Time

MEDICAL SURVEILLANCE:

No

SIGNIFICANT WORK ACTIVITIES:

Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day) Keyboard use (greater or equal to 50% of the workday)

Abbott is an Equal Opportunity Employer of Minorities/Women/Individuals with Disabilities/Protected Veterans.

EEO is the Law link - English: EEO is the Law link - Espanol:
Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare with leading businesses and products in diagnostics medical devices nutritionals and branded generic medicines. Our 114000 collea...
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About Company

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WHO WE ARE CREATING LIFE-CHANGING TECHNOLOGY From removing the regular pain of fingersticks as people manage their diabetes to connecting patients to doctors with real-time information monitoring their hearts, from easing chronic pain and movement disorders to testing half the world’s ... View more

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