Senior Counsel, IP Job Description Abbott is currently seeking an experienced IP attorney to join our highly effective team in managing all aspects of intellectual property for our Diabetes business. We take a team-oriented approach to managing a large IP portfolio and deeply integrating into our diverse business divisions. We are looking for an individual who not only is responsible for their personal docket but can also make valuable contributions at a group level. Technical Skills: The successful candidate will possess strong knowledge of patent law and demonstrated significant experience counseling clients on intellectual property issues, drafting and prosecuting patent applications, freedom-to-operate or product clearance experience, preferably for medical device/digital products and experience in PTAB proceedings, such as oppositions, reexaminations, or IPR proceedings and patent litigation. Working knowledge of patent and copyright law in major jurisdictions outside of the US is preferred. Core job responsibilities include: • In close collaboration with other IP team members, strategically developing our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications; • Reviewing outside counsel work to ensure the work, methodology, strategy and costs meet Abbott’s expectations; • Collaborating 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; • Assisting internal and external litigation counsel on IP litigation matters; • Conducting 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; • Providing counseling and strategy options on marketing and promotional material; and • Conducting due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development; • Managing invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and Invention Review Board meetings; and • Conducting in-depth analyses of competitor products and IP portfolios. Location of Position: • Alameda, California • Reporting/Department o Position will report to Division Counsel within the Patent/Trademark Department Managerial/Supervision Duties: • May directly manage an administrative assistant, paralegal or a Counsel-level attorney, and will assist in supervising and training support staff 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]. Training/Experience Required: • Possess a Juris Doctor degree from an accredited law school, demonstrate a strong academic background, and be admitted to a US state bar in good standing, have, or be able to obtain, appropriate licensure to practice law in California. • 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 • Ability to independently handle complex matters with minimal supervision, and understand which issues to elevate to senior management and appropriate timing for doing so • In addition to top-notch legal skills and a strong ethical center, excellent interpersonal, strategic thinking, communication and organizational skills 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.
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