Senior Counsel - IP
Diagnostic testing is a compass, providing information that
helps in the prevention, diagnosis and treatment of a range of health
conditions.
Abbott’s life-changing tests and diagnostic tools give you
accurate, timely information to better manage your health. We’re empowering
smarter medical and economic decision making to help transform the way people
manage their health at all stages of life. Every day, more than 10 million
tests are run on Abbott’s diagnostics instruments, providing lab results for
millions of people.
The successful candidate will possess strong knowledge of patent
law and demonstrated experience counseling clients on intellectual property
issues, drafting and prosecuting patent applications, freedom-to-operate or
product clearance experience, preferably for Diagnostics Devices
Core Responsibilities:
- In close
collaboration with other IP team members, 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;
- participate in the
effective management of our external budget, including monthly, quarterly
and annual budget reviews, quarterly forecasting, and reviewing outside
counsel invoices;
- manage invention
disclosures, including collecting and screening disclosures, conducting inventor
interviews, presenting disclosures at patent committee and Invention
Review Board meetings;
- 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.
Critical Success Factors:
- Good Judgment: Demonstrate expertise and sound judgment, understand
how assigned responsibilities support Abbott’s business objectives, and be
able to provide practical, risk-balanced advice based upon a thorough
understanding of the scope of an issue, taking full advantage of internal
networks and external intelligence.
- Collaboration: Firm understanding of available legal, functional, and
business resources and ability to integrate information from a number of
sources to achieve business results, including breaking down boundaries to
create alignment as necessary, in a complex, global, matrixed environment.
- Anticipation: Holistic, big picture thinker, who anticipates
changes in law, enforcement, and/or business objectives and adapts
approach as necessary to manage risks effectively and mitigate issues
before they arise.
- Influencing Skills: Build strong relationships
with business partners to tactfully influence and gain their support to
drive desired outcomes. Represent Abbott externally to [customers,
suppliers, competitors, trade associations or government agencies]; and [resolve
legal issues using negotiation skills and legal expertise/engage in
external influencing efforts].
Required Qualifications:
- Juris Doctor
from accredited law school and admitted to a US state bar in good
standing;
- USPTO
registration in good standing;
- Strong academic
background;
- An undergraduate
degree or an advanced degree in life sciences or biology is required and
comfort working in molecular biology, cell biology, biochemistry,
microbiology and/or immunology is preferred. BS in engineering physics or
life sciences – biotechnology; chemistry biochemistry; biology.
- The ideal
candidate is conversant in a spectrum of technical areas across the
biotechnology, and diagnostic industries, and is able to handle global
patent portfolios for developing and commercialized products.
- Minimum of 10
years working as a patent attorney and counseling clients on intellectual
property issues. The successful candidate must have experience
prosecuting mechanical, electro-mechanical, and software patent
applications, conducting agreement review and negotiations, as well as
possess in-house IP experience, preferably in the Diagnostics/Medical
Device industry. Experience handling PTAB/EPO Oppositions and
supporting patent litigation a plus;
- 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.
Preferred Qualifications:
- Significant
freedom-to-operate or product clearance experience, preferably for
Diagnostics products;
- At least 10
years of drafting and prosecuting patent applications in the area of
biotechnology and/or software and/or managing a Diagnostics IP portfolio
- Working
knowledge of patent laws in major jurisdictions outside of the US;
- Government
(USPTO or EPO) and in-house experience a plus.
About Abbott:
Employer of Choice: Through numerous local, national, and
international accolades, Abbott is regarded as an employer of choice for our
commitment to workplace excellence. Our employees are given the tools to
succeed, lead and grow, with challenging opportunities and work that makes a
difference. Through our diverse healthcare businesses, we connect people and
potential in ways that no other company can. Discover a world of opportunities
at Abbott.
Who We Are: We are legal professionals and business
partners, and we use our expertise and judgment to guide Abbott’s businesses
through the challenges that come with operating in complex global environments.
What We Offer: Abbott Legal provides meaningful and
challenging work on a global scale. We are a dynamic organization and we
develop our employees to meet the evolving needs of the company.
How We Work: We are collaborative, curious, and pragmatic.
We value diversity of background, experience, and thought in our teams. We are
expected to be holistic thinkers who see the big picture, and make thoughtful,
informed decisions.
