IP Senior Counsel (Digital) - Abbott Diabetes Care

JOB DESCRIPTION:

WORKING AT ABBOTT:

At Abbott, you can do work that matters, grow, and learn, care for yourself and family, be your true self and live a full life. You’ll also have access to:

• Career development with an international company where you can grow the career you dream of
• 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 as well as a best place to work for diversity, working mothers, female executives, and scientists

Our location in Alameda, CA currently has an opportunity for a Senior Counsel, Intellectual Property.  

Abbott Medical Devices is seeking a Senior Counsel for its Diabetes Care business.  The position will take a team-oriented approach to managing IP issues by partnering with the Diabetes Care business (“Operating Division”).  The successful candidate will be responsible for managing and directing a diversity of intellectual property issues within our Diabetes Care business. We are looking for an individual who aspires to make valuable IP contributions to the broader organization. 

Technical Skills: 

The successful candidate will possess strong knowledge of patent law and have a history of success advising clients on intellectual property issues, building competitive IP portfolios, and clearing products in the Medical Devices or similar space.  Experience patenting AI, Machine Learning, Software, and Digital inventions in the Medical Device space is preferred.  A working knowledge of patent law in major jurisdictions outside the U.S., experience with adversarial USPTO and/or European Patent Office proceedings, patent litigation experience and transactional experience are preferred. 

Core job responsibilities include: 

• In close collaboration with various levels of the Operating Division, strategically developing our worldwide patent portfolio, including directing and managing domestic and OUS outside counsel to prepare and prosecute patent applications that are aligned with strategic objectives; 

• Review outside counsel work product to ensure the methodology, strategy and costs meet Abbott’s expectation; 

• Manage and direct pipeline portfolio by soliciting/developing invention disclosures, conducting inventor interviews and presenting disclosures at cross functional patent committee meetings to align future filings with strategic direction; 

• Conduct in-depth analyses of competitor products and IP portfolios; 

• Conduct employee training on protecting Abbott innovations, developing intellectual property assets and best practices for maintaining confidential business information; 

• Assist internal and external litigation counsel on IP litigation matters; 

• Conduct due diligence on potential mergers, acquisitions and investment opportunities; 

• Collaborate with commercial legal counsel, including preparing and reviewing license agreements, various standard agreements and counseling the Operating Division regarding IP transactional matters; and 

• Provide advice and strategic options for marketing and promotional material. 

Location of Position: 

• Alameda, CA 

Training/Experience Required: 

• 7+ years of experience practicing patent law in a law firm or a corporation 

• Ability to handle multiple projects in fast-paced environment and exercise sound commercial and legal judgment 

• In addition to top-notch legal skills and excellent interpersonal, strategic thinking, communication, and organizational skills 

• JD from an accredited law school, admitted to and in good standing with (i) a U.S. state bar and (ii) the USPTO 

The base pay for this position is

In specific locations, the pay range may vary from the range posted.

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