Senior Counsel, Intellectual Property

About the Role 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 operating division and will be responsible for managing and directing a diverse portfolio of intellectual property matters within our Diabetes Care business. We are looking for an individual who aspires to make valuable IP contributions to the broader organization.

What You'll Do

• Strategically develop and manage Abbott's worldwide patent portfolio for the Diabetes Care business, directing domestic and outside counsel to prepare and prosecute patent applications aligned with strategic objectives.
• Review outside counsel work product to ensure methodology, strategy and costs meet Abbott’s expectations.
• Manage and direct pipeline portfolio by soliciting 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 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.
• Provide advice and strategic options for marketing and promotional material.

What We're Looking For

• 7+ years of experience practicing patent law in a law firm or a corporation.
• Strong knowledge of patent law and a history of success advising clients on IP 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.
• 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.
• JD from an accredited law school, admitted to and in good standing with (i) a U.S. state bar and (ii) the USPTO.
• Ability to handle multiple projects in a fast-paced environment and exercise sound commercial and legal judgment.
• Excellent interpersonal, strategic thinking, communication, and organizational skills.
• Location: Alameda, CA.

Nice to Have

• Experience patenting AI, ML, software, and digital inventions in Medical Devices space is preferred.
• Experience with adversarial USPTO and European Patent Office proceedings; patent litigation and transactional experience is a plus.
• International patent practice experience.

Compensation & Benefits

• Base pay: $172,000.00 – $344,000.00 per year. In specific locations, the pay range may vary from the range posted.