Medtronic is seeking a principal patent counsel with responsibility for handling all aspects of intellectual property (IP) of one or more mechanical technology areas for the Spinal and Biologics business of Medtronic, including implementing robust technology and product IP strategies, timely client counseling, execution on a broad array of IP topics, some in-house patent preparation and prosecution, and coordinate with and supervise outside counsel in support of these activities, as needed.
Responsibilities:
• Responsible for intellectual property for one or more mechanical technologies in the Medtronic Spinal and Biologics business, including developing and implementing offensive and defensive IP strategies, administration and evaluation of invention disclosures, preparation and prosecution of patent applications, conducting various patent searches, conducting freedom-to-practice evaluations, preparing or obtaining appropriate opinions, being cognizant of competitor products and related IP, conducting infringement investigations and initial invalidity analyses, performing IP due diligence for mergers/acquisitions, providing support for patent litigation, including early due diligence and assessment of issues, and providing timely counsel on intellectual property issues.
• Coordinate and monitor outside counsel work and cost in collaboration with the Chief Patent Counsel.
• Review agreements involving technology and intellectual property. Draft intellectual property agreements or clauses, including licensing provisions, when requested.
• Interface with research and product development departments, including proactive development of IP strategies, invention disclosure reviews, search reports, and client counseling.
• Review of and advice on IP relating to sales, advertising, and promotional materials and programs.
• Assist the Chief Patent Counsel in developing and implementing policies and procedures relating to intellectual property.
Qualifications (Basic):
• A Juris Doctor from an accredited U.S. law school and licensed to practice in at least one state or the District of Columbia with the ability to ultimately be admitted in California.
• Registered to practice before the U.S. Patent and Trademark Office.
• Bachelor's Degree in science or technology field required.
• A minimum of 8 years legal experience handling intellectual property law issues.
Qualifications (Desired/Preferred):
Ideal candidate will have experience with a medical manufacturing company with a preference for device, bioengineering or biotech experience; or with an independent law firm with a strong practice geared to medical manufacturers. The best candidate will have these desired skills and abilities:
• Strong interpersonal skills and the ability to become an integral part of legal, technical, and business teams.
• Demonstrated ability to draft medical device related patent applications.
• Excellent judgment and ability to execute and deliver in a rapid, fast-paced business environment; perform under pressure.
• Highly motivated with desire to deliver outstanding professional work product.
• Work independently with minimal supervision and effectively contribute as a team player on legal, technical, and business teams.
• Possess superior writing and oral communication skills.
• Demonstrated creativity and success in strategizing, structuring, and obtaining robust IP specific to an area of technology or product, which includes offensive and defensive patent protection.
• Possess diverse IP knowledge with heavy practical experience in medical device technology. Experience with a medical device, biotechnology, or diagnostics company is desirable.
• Demonstrated ability to understand medical technology, with ability to apply it to an R & D effort with strong client interaction.
• Experience with litigation desirable, but not essential.
• Alternatively, attorney and/or agent candidates with less than these requirements may be considered on a case-by-case basis for a more entry level position.
Contact:
Interested applicants should contact at Miri Brandley at miri.j.brandley@medtronic.com.
Additional Info:
Employer Type: Large Corporation
Job Location: Sunnyvale, California