Senior IP Counsel - Abbott Diagnostics

Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals and branded generic medicines. Our 114,000 colleagues serve people in more than 160 countries. JOB DESCRIPTION: Manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and Invention Review Board meetings. Participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices. 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. 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 or an advanced degree in life sciences or engineering 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. Minimum of 7 years working as a patent attorney and counseling clients on intellectual property issues. The successful candidate must have experience prosecuting biotechnology, chemical, mechanical, electro-mechanical, and/or software patent applications as well as conducting agreement review and negotiations. Experience handling PTAB/EPO Oppositions and supporting patent litigation a plus. Significant freedom-to-operate or product clearance experience, preferably for medical device products. 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 Possess in-house IP experience, preferably in the medical device or diagnostic industry. At least 5 years of drafting and prosecuting patent applications in the area of biotechnology and/or medical device and/or managing a Diagnostics IP portfolio Working knowledge of patent laws in major jurisdictions outside of the US. Government (USPTO or EPO) experience a plus. The base pay for this position is $149,300.00 – $298,700.00 In specific locations, the pay range may vary from the range posted. JOB FAMILY: Operations & Business Support DIVISION: GENC General Counsel LOCATION: United States > Abbott Park : AP06A ADDITIONAL LOCATIONS: WORK SHIFT: Standard TRAVEL: Yes, 10 % of the Time MEDICAL SURVEILLANCE: Not Applicable SIGNIFICANT WORK ACTIVITIES: Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day), Keyboard use (greater or equal to 50% of the workday) Abbott is an Equal Opportunity Employer of Minorities/Women/Individuals with Disabilities/Protected Veterans. EEO is the Law link - English: http://webstorage.abbott.com/common/External/EEO_English.pdf EEO is the Law link - Espanol: http://webstorage.abbott.com/common/External/EEO_Spanish.pdf Abbott is about the power of health. For more than 135 years, Abbott has been helping people reach their potential — because better health allows people and communities to achieve more. With a diverse, global network serving customers in more than 160 countries, we create new solutions — across the spectrum of health, around the world, for all stages of life. Whether it’s next-generation diagnostics, life-changing devices, science-based nutrition, or novel reformulations, we are advancing some of the most innovative and revolutionary technologies in healthcare, helping people live their best lives through better health. The people of Abbott come to work each day with relentless energy, enthusiasm and a promise to enhance the health and well-being of millions of people. They push the boundaries to help manage and treat some of life’s greatest health challenges. We invite you to explore opportunities at Abbott, to see if your talents and career aspirations may fit with our openings. An equal opportunity employer, Abbott welcomes and encourages diversity in our workforce. Follow Us: Facebook LinkedIn YouTube Twitter