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Intellectual Property Counsel II

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Legal
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19000LBT Requisition #
Careers that Change Lives
This position has the responsibility to provide intellectual property legal support to Medtronic’s Diabetes Group.  The individual will be responsible for coordinating IP strategies and developing IP portfolios for medical technologies within the Diabetes Group, supporting product development and research through proactive IP counseling and procurement, and educating clients on IP matters. This position will report to the Vice President, Intellectual Property of the Diabetes Group. 

A Day in the Life

 

Responsibilities may include the following and other duties may be assigned.

  • Preparing and prosecuting U.S. and foreign patent applications relating to medical devices in Diabetes field with emphasis on software aspects (for example, algorithms, user-interfaces, data analytics, artificial intelligence and similar technologies), including self-performed work, managing and reviewing outside counsel and diligently managing a docket using the corporate docketing systems;

  • Executing on all aspects of creation and management of intellectual property, including developing and implementing offensive IP strategies, administration and evaluation of invention disclosures, conducting patent searches, performing freedom-to-practice evaluations and preparing or obtaining appropriate opinions, proactively becoming cognizant of competitor products and related IP watches, conducting infringement investigations and initial invalidity analyses, and providing timely counsel on intellectual property issues;

  • Performing IP due diligence for mergers/acquisitions;

  • Providing support and management on patent litigation, including early pre-suit assessments;

  • Assisting in the drafting and negotiation of agreements involving the transfer or licensing of intellectual property; 

  • Interfacing with the R&D and business development groups, including proactive development and implementation of IP strategies, invention disclosure reviews, search reports and client counseling, and participation on product development teams to stay aligned with business objectives;

  • You will be part of a collegial legal team and will be expected to work collaboratively with other in-house counterparts on agreement and transactional projects, client education, and development of standard practices to accomplish the objectives of the Diabetes Group legal department.  In addition, comfort and confidence in communicating intellectual property advice to all levels of management is essential.  

  • Travel is minimal and occasional.

Must Have: Minimum Requirements
  • Juris Doctor 
  • Minimum 5 years of experience in patent and intellectual property law disciplines 
  • Licensed to practice in at least one state or the District of Columbia with the ability to be admitted in California as RIHC; registered to practice before the U.S. Patent and Trademark Office
Nice to Have
  • Bachelor's Degree in Computer Engineering, Computer Science, or Electrical Engineering with coursework in computer software, or similar scientific disciplines
  • Patent preparation and prosecution skills with strong experience in the preparation and prosecution of computer software related inventions working either In-house at a company or in a law firm
  • Broad IP experience is preferred including, in addition to US patent preparation and prosecution, experience with global patent issues and practices, litigation, transactions and transactional due diligence
  • Direct experience in engineering or computer science disciplines is preferred but not required
  • An aptitude and interest in a wider range of IP legal issues including Open Source
  • Excellent judgment, strong analytical thinking, strong commitment to company values are essential. 
About Medtronic

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. 

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)

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