Abbott

Counsel, Intellectual Property

Abbott

full-time

Posted on:

Location Type: Office

Location: Plymouth • Minnesota • United States

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Salary

💰 $129,300 - $258,700 per year

About the role

  • 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.

Requirements

  • Juris Doctor from accredited law school and admitted to a US state bar in good standing.
  • USPTO registration in good standing.
  • Strong academic background.
  • BS in engineering (electrical, computer, mechanical, chemical or biomedical).
  • Minimum of 5 years working as a patent attorney and counseling clients on intellectual property issues.
  • The successful candidate must have experience drafting and prosecuting electro-mechanical, electrical, and/or software patent 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 and comply with applicable FDA regulations and company operating procedures, processes, policies, and tasks.
Benefits
  • Free medical coverage for employees* via the Health Investment Plan (HIP) PPO
  • An excellent retirement savings plan with high employer contribution
  • Tuition reimbursement, the Freedom 2 Save student debt program and FreeU education benefit - an affordable and convenient path to getting a bachelor’s degree.
  • A company recognized as a great place to 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
Applicant Tracking System Keywords

Tip: use these terms in your resume and cover letter to boost ATS matches.

Hard Skills & Tools
patent prosecutiondrafting patent applicationsfreedom-to-operate assessmentsdue diligenceagreement reviewnegotiationsintellectual property counselinganalytical skillsquantitative skillsemployee training
Soft Skills
oral communicationwritten communicationinterpersonal skillsfacilitation skillspresentation skillsorganizational skillsstrategic thinkingfollow-up skills
Certifications
Juris DoctorUSPTO registration