Principal Intellectual Property Counsel
Careers that Change Lives
A Day in the Life
This position has the responsibility to provide intellectual property legal support to Medtronic’s Cardiovascular Operating Unit. As part of collaborative team, the individual will be responsible for implementing global IP strategies, developing strategic and monetizable IP portfolios for medical technologies and supporting product development and research through proactive IP counseling and education, supporting M&A activities, supporting related licensing transactions, and advising clients in R&D and the business on various IP matters. The individual will be responsible for delivering clear, concise, and actionable legal advice.
We believe that when people from different cultures, genders, and points of view come together, innovation is the result — and everyone wins. Medtronic walks the walk, creating an inclusive culture where you can thrive.
This position can reside in Santa Rosa, CA; Boulder, CO; Northridge, CA; Minneapolis, MN; North Haven, CT; Mansfield, MA; Memphis, TN.
A Day in the Life
Responsibilities may include the following and other duties may be assigned.
- Preparation and prosecution of a global IP portfolio relating to medical devices in the cardiovascular field. Tasks include self-performed work, managing and reviewing outside counsel work, and diligently managing dockets using the corporate docketing systems;
- Executing on all aspects of creation and management of intellectual property, including implementing IP strategies, administration and evaluation of invention disclosures, conducting freedom-to-operate diligence and preparing opinions for clients, proactively becoming cognizant of competitor products and related IP watches, conducting infringement investigations and invalidity analyses, and providing timely counsel to clients;
- Interfacing with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectives;
- Providing support on patent litigation, including early pre-suit assessments;
- Supporting IP due diligence for mergers/acquisitions;
- Drafting and negotiation of IP agreements, such as, for example, patent licensing agreements, joint-development agreements, material transfer agreements;
- Reviewing Medtronic patent assets and creating patent portfolio packages in support of enforcement and monetization activities;
- Operating within budget constraints for outside counsel and third party vendor spend;
- The individual will be part of a collegial legal team and will be expected to work collaboratively with other in-house counterparts on various transactional projects, client education, and development of standard practices to accomplish the objectives of Medtronic IP organization. In addition, comfort and confidence in communicating intellectual property advice in a clear and succinct way to management is essential.
Must Have: Minimum Requirements
Together, we can change healthcare worldwide. At Medtronic, we push the limits of what technology, therapies and services can do to help alleviate pain, restore health and extend life. We challenge ourselves and each other to make tomorrow better than yesterday. It is what makes this an exciting and rewarding place to be.
We want to accelerate and advance our ability to create meaningful innovations - but we will only succeed with the right people on our team. Let’s work together to address universal healthcare needs and improve patients’ lives. Help us shape the future.
Physical Job Requirements
The physical demands described within the Responsibilities section of this job description are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. For Office Roles: While performing the duties of this job, the employee is regularly required to be independently mobile. The employee is also required to interact with a computer, and communicate with peers and co-workers. Contact your manager or local HR to understand the Work Conditions and Physical requirements that may be specific to each role. (ADA-United States of America)
- Juris Doctor (J.D.) from a nationally accredited law school with strong academic credentials
- Bachelor's Degree in Biomedical Engineering, Mechanical Engineering, Chemical, Electrical, or similar scientific disciplines
- 5+ years of experience as an attorney in intellectual property law discipline
- Licensed to practice in at least one US state or the District of Columbia
- Registered to practice before the U.S. Patent and Trademark Office
- Both in-house and law firm experience
- Excellent judgment, strong strategic and analytical thinking and ability to work on multiple projects at the same time
- Excellent priority-setting skills and communications skills to deal with direct client contact and management
- Proficiency in engineering, strong creative abilities, and scientific principles.
- Understanding of basic business concepts, strategies, and risks
- Broad IP experience, including patent prosecution, freedom-to-operate, opinion preparation, licensing, and IP transactions
- Medical device experience
- Litigation experience
- Possess a strong commitment to company values
Together, we can change healthcare worldwide. At Medtronic, we push the limits of what technology, therapies and services can do to help alleviate pain, restore health and extend life. We challenge ourselves and each other to make tomorrow better than yesterday. It is what makes this an exciting and rewarding place to be.
We want to accelerate and advance our ability to create meaningful innovations - but we will only succeed with the right people on our team. Let’s work together to address universal healthcare needs and improve patients’ lives. Help us shape the future.
Physical Job Requirements
The physical demands described within the Responsibilities section of this job description are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. For Office Roles: While performing the duties of this job, the employee is regularly required to be independently mobile. The employee is also required to interact with a computer, and communicate with peers and co-workers. Contact your manager or local HR to understand the Work Conditions and Physical requirements that may be specific to each role. (ADA-United States of America)
