Senior Principal Intellectual Property Counsel, Diabetes

Employment Type

: Full-Time

Industry

: Legal



Careers that Change Lives

This position has the responsibility to provide intellectual property legal support to Medtronic's Diabetes Group. The individual will be responsible for coordinating global IP strategies, developing strategic and monetizable IP portfolios for medical technologies and driving related licensing transactions, supporting product development and research through proactive IP counseling and education, supporting M&A activities, and advising clients at all levels of R&D and business leadership on various IP matters including freedom-to-operate issues. This position will report to the Vice President, Intellectual Property, in the Diabetes Group.

A Day in the Life

Responsibilities may include the following and other duties may be assigned.

  • Preparation and prosecution of a global IP portfolio relating to medical devices in the Diabetes field with emphasis on electronics and computer engineering technologies. Tasks include self-performed work, managing and reviewing outside counsel work, and diligently managing dockets using the corporate docketing systems;
  • Executing on all aspects of creation and management of intellectual property, including developing and implementing IP strategies, administration and evaluation of invention disclosures, conducting freedom-to-operate diligence and preparing opinions for clients, proactively becoming cognizant of competitor products and related IP watches, conducting infringement investigations and invalidity analyses, and providing timely counsel to clients;
  • Interfacing with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectives;
  • Providing support and management on patent litigation, including early pre-suit assessments;
  • Performing IP due diligence for mergers/acquisitions;
  • Reviewing Medtronic patent assets and creating patent portfolio packages in support of monetization activities;
  • Drafting and negotiation of IP agreements, such as, for example, patent licensing agreements, joint-development agreements, material transfer agreements;
  • You will be part of a collegial legal team and will be expected to work collaboratively with other in-house counterparts on various transactional projects, client education, and development of standard practices to accomplish the objectives of Medtronic IP organization. In addition, comfort and confidence in communicating intellectual property advice in a clear and succinct way to all levels of management is essential.
  • Travel is minimal and occasional.


Must Have: Minimum Requirements

  • Juris Doctor (J.D.) from a nationally accredited law school with strong academic credentials
  • Bachelor's Degree in Electrical Engineering, Electronics or Computer or Biomedical Engineering, or similar scientific disciplines
  • 8+ years of experience as an attorney in intellectual property law discipline
  • Licensed to practice in at least one state or the District of Columbia with the ability to be admitted in California as RIHC
  • Registered to practice before the U.S. Patent and Trademark Office


Nice to Have

  • Both in-house and law firm experience
  • Understanding of basic business concepts, strategies, and risks
  • Broad IP experience including good understanding of issues related to IP transactions and transactional due diligence
  • Patent Licensing and Monetization experience is a definite plus
  • Direct experience in engineering or science disciplines
  • International experience is a plus
  • Excellent judgment, strong analytical thinking, and strong commitment to company values are essential


About Medtronic

Together, we can change healthcare worldwide. At Medtronic, we push the limits of what technology, therapies and services can do to help alleviate pain, restore health and extend life. We challenge ourselves and each other to make tomorrow better than yesterday. It is what makes this an exciting and rewarding place to be.

We want to accelerate and advance our ability to create meaningful innovations - but we will only succeed with the right people on our team. Let's work together to address universal healthcare needs and improve patients' lives. Help us shape the future.

Physical Job Requirements

The physical demands described within the Responsibilities section of this job description are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

While performing the duties of this job, the employee is regularly required to be independently mobile. The employee is also required to interact with a computer, and communicate with peers and co-workers. Contact your manager or local HR to understand the Work Conditions and Physical requirements that may be specific to each role. (ADA-United States of America) * The salary listed in the header is an estimate based on salary data for similar jobs in the same area. Salary or compensation data found in the job description is accurate.

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