Mansfield, MA, United States
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Intellectual Property Counsel III
Santa Rosa, California, United States
Oct 26, 2019
**Careers that Change Lives**
This position will support the development and implementation of IP portfolios in the Coronary and Structural Heart (CSH) business within the Cardiac and Vascular Group (CVG). As part of a collaborative team, this individual will be responsible for supporting product development through proactive IP counseling, for driving the development of IP portfolios, and for delivering clear, concise, and actionable legal advice to all levels of RD and business leadership.
This position will reside in Santa Ana, CA.
**A Day in the Life**
Responsibilities may include the following and other duties may be assigned.
Direct and guide the IP deliverables for all stages of product development.
Support the development and implementation of IP strategies for the assigned divisions.
Oversee the preparation and prosecution of a global IP portfolio, including the management of U.S. and foreign IP counsel.
Manage the overall product release clearance/freedom to operation as it pertains to patents and intellectual property, including preparing clearance/freedom to operate opinions.
Prepare intellectual property due diligence analyses for acquisition and divestiture matters as assigned.
Train and educate business personnel on invention disclosure processes, patent processes and IP asset management.
Demonstrated ability to communicate to diverse audiences.
Demonstrated ability to collaborate in highly matrixed teams of IP and legal professionals.
Collaborate with corporate IP litigation team in all aspects of patent litigation as well as adverse proceedings before patent offices.
Provide legal counsel and guidance regarding trademark selection and clearance.
Negotiate and draft IP related agreements.
**Must Have: Minimum Requirements**
Bachelor's Degree in Biomedical Engineering, Mechanical, Chemical, Electrical, Electro-Mechanical, Mechanical or similar scientific discipline
8 years of experience in patent and intellectual property law disciplines
Registration to practice before the US Patent and Trademark Office
Current member of a state bar or DC bar
**Nice to Have**
Master of Science Degree in Electrical, Electro-Mechanical, Mechanical, Computer or Biomedical Engineering, Chemical, Physics or similar scientific discipline
Aptitude or experience in various intellectual property legal issues, including, licensing, trade secret, copyright, trademark and open source software
Analytical thinking and ability to work on multiple projects at the same time
Medical device experience
Excellent priority-setting skills, and people skills to deal with direct client contact and management
Proficiency in engineering, strong creative abilities and scientific principles
Possess a strong commitment to company values
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. Lets 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.
Travel: 15-20% will be required.
It is the policy of Medtronic to provide equal employment opportunity (EEO) to all persons regardless of age, color, national origin, citizenship status, physical or mental disability, race, religion, creed, gender, sex, sexual orientation, gender identity and/or expression, genetic information, marital status, status with regard to public assistance, veteran status, or any other characteristic protected by federal, state or local law. In addition, Medtronic will provide reasonable accommodations for qualified individuals with disabilities.