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Abbott · 4 days ago

Senior IP Counsel - Abbott Diagnostics

Illinois, United States

Full-time

Onsite

Senior Level

$149K/yr - $299K/yr

7+ years exp

Abbott is a global healthcare leader that helps people live more fully at all stages of life. The Senior IP Counsel will manage invention disclosures, conduct due diligence on mergers and acquisitions, and provide legal guidance on IP matters to various teams within the organization.

BiotechnologyEmergency MedicineGeneticsHealth CareHealth DiagnosticsManufacturingMedicalMedical DeviceNutritionPharmaceutical

Responsibilities

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 monthly, quarterly and 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 work, methodology, strategy and costs meet Abbott’s expectations

Collaborate with cross-functional teams and counsel a variety of clients on IP and other legal issues

Interact with and provide 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

May 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 materials

Occasional domestic or foreign travel

Qualification

Juris DoctorUSPTO registrationPatent prosecutionFreedom-to-operate experienceLife sciences degreeBiotechnology patent applicationsMedical device experienceAnalytical skillsCommunication skillsInterpersonal skillsStrategic thinking

Required

Juris Doctor from accredited law school and admitted to a US state bar in good standing

USPTO registration in good standing

Strong academic background

An undergraduate or an advanced degree in life sciences or engineering is required and comfort working in molecular biology, cell biology, biochemistry, microbiology and/or immunology is preferred. BS in engineering physics or life sciences – biotechnology; chemistry biochemistry; biology

Minimum of 7 years working as a patent attorney and counseling clients on intellectual property issues

The successful candidate must have experience prosecuting biotechnology, chemical, mechanical, electro-mechanical, and/or software patent applications as well as conducting agreement review and negotiations

Experience handling PTAB/EPO Oppositions and supporting patent litigation a plus

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 and comply with applicable FDA regulations and company operating procedures, processes, policies, and tasks

Preferred

Possess in-house IP experience, preferably in the medical device or diagnostic industry

At least 5 years of drafting and prosecuting patent applications in the area of biotechnology and/or medical device and/or managing a Diagnostics IP portfolio

Working knowledge of patent laws in major jurisdictions outside of the US

Government (USPTO or EPO) experience a plus