Division Counsel - Patent & IP - Abbott (Alameda)

  • 05 Dec 2018 4:04 PM
    Message # 6947685
    Anonymous member (Administrator)

    Abbott is seeking a Division Counsel for its Diabetes Care (ADC) business.  The business is growing rapidly in large part due to the launch of its new industry-leading product, FreeStyle Libre, a continuous glucose monitoring system.  The ideal candidate will manage all aspects of intellectual property for a diabetes product portfolio that includes hardware, software, digital platforms and more.  Abbott’s legal department takes a team-oriented approach to managing a large IP portfolio and deeply integrates into the business.  The team is looking for candidates who not only are responsible for their personal docket, but can also manage a small team and make valuable contributions at a group level.

    Core Responsibilities:

    • Manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at ADC patent committee and Invention Review Board meetings;
    • Conduct in-depth analyses of competitor products and IP portfolios;
    • Conduct due diligence on potential mergers and acquisitions as well as freedom-to-operate assessments that drive strategic acquisitions and product development;
    • Review work of outside counsel to ensure the work, methodology, strategy and costs meet Abbott’s expectations;
    • Interact with and provide legal and strategic guidance to senior management, engineers and other functional organizational leadership;
    • Collaborate closely with team members and strategically develop our 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;
    • 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;
    • Provide counseling and strategy options on marketing and promotional material;
    • Participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices;
    • 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;
    • Occasional domestic or foreign travel.

    Ideal Candidates:

    Role and job title to be determined based on length and diversity of experience.  Sr. Counsel must have a minimum of 10 years working as a patent attorney with work experience in prosecuting chemical, electrical, or mechanical and/or electro-mechanical patent applications with a recognized corporation and/or law firm.  The individual must also have experience with PTAB proceedings as well as counseling clients on patent, trademark, trade secret, and copyright issues.  Division Counsel must have experience managing attorneys and a minimum of 15 years working as a patent attorney, as well as the same qualifications as Sr. Counsel.

    Minimum Qualifications:

    • Bachelor’s Degree;
    • Juris Doctor from accredited law school and admitted to a US state bar in good standing;
    • USPTO registration in good standing;
    • 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;
    • Freedom-to-operate or product clearance experience, preferably for medical device products.

    Preferred Qualifications:

    • Bachelor’s Degree in engineering or science;
    • Ability to understand and comply with applicable FDA regulations and Company operating procedures, processes, policies, and tasks;
    • 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 industry experience;
    • In-house experience preferred;
    • Excellent oral and written communication skills, interpersonal, facilitation, presentation, quantitative, analytical, organizational, and follow-up skills;
    • Strong interpersonal skills and strategic thinking.

    To apply, visit their employment page.


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