Principal IP Legal Counsel

Key Skills

Aartificial intelligence, Data science techniques, Intellectual Property Law, Leadership Skill, Licensing, Patent and Trademark Law, Patent Prosecution

Job Description

A Day in the Life

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

Protect Medtronic’s Technology Pipeline and Ability to Compete

• Execute all aspects of creation and management of intellectual property
• Prepare and prosecute a patent portfolio worldwide in support of global business and IP strategies. Tasks include self-directed work, managing and reviewing outside counsel work, diligently managing dockets using the corporate docketing systems, and implementing patent maintenance decisions
• Interface with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectives
• Protect Medtronic’s highest value R&D investments by managing invention disclosures and prioritizing filings with the highest level of impact
• Leverage existing patent applications (i.e., mine) to develop IP assets that accommodate an evolving competitive landscape
• Support management of IP risk for Medtronic’s pipeline, including performing global freedom-to-operate evaluations and overseeing the preparation of opinions of counsel when necessary
• Provide support on patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositions
• Support IP due diligence for mergers/acquisitions with solution-focused approach
• Assist in drafting and negotiating IP agreements, such as, for example, patent licensing agreements, joint-development agreements, material transfer agreements, acquisition agreements
• Determine if invention should be protected as a patent or trade secret
• Direct, develop, and analyze thoughtful patent searching strategies for patentability, invalidity, and competitive landscape
• Ensure ongoing awareness of competitors’ products, activities, and IP portfolio
• Operate within budget constraints for outside counsel and third party vendor spend

 Be a Strategic and Inclusive IP Partner

• Develop strategic relationships with operating unit leaders, marketing, business development, and R&D to integrate IP into the overall operating unit strategy and provide IP advice and counsel
• Manage stakeholder expectations through proactive and clear communications
• Direct brainstorms and make filing decisions to ensure expansive protection of new technologies and therapies, including ensuring coverage of whitespace
• Partner with portfolio strategy, upstream marketing, business development, and competitive intelligence functions to perform landscaping activities for future opportunities
• Educate key internal stakeholders on IP activities, competition, and outcomes of IP strategy execution
• Develop strategic relationships and manage outside counsel to accomplish key deliverables on time and on budget
• Partner across the IP team to share and leverage insights and best practices
• Partner with IP COEs (litigation, BD, trademarks, data/AI, and patent portfolio strategy) to deliver optimal outcomes to the operating unit
• Partner with operating unit commercial legal to coordinate and align on a cohesive legal strategy for the operating unit
• Model the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right way Develop strategic relationships with business leadership, marketing, BD, and R&D to integrate IP into the overall operating unit strategy and provide IP advice and counsel

Must Have: Minimum Requirements

• Juris Doctor (J.D.) from a nationally accredited law school with strong academic credentials
• 5+ years of experience as an attorney in intellectual property law discipline 
• Licensed to practice in at least one US state or the District of Columbia
• Registered to practice before the US Patent and Trademark Office

Nice to Have

• Bachelor's Degree in Electrical Engineering, Biomedical Engineering, Mechanical Engineering, or similar scientific disciplines
• Medical device experience
• Both in-house and law firm experience
• Excellent judgment, strong strategic and analytical thinking and ability to work on multiple projects at the same time
• Ability to prioritize across multiple tasks and demands while remaining organized
• Able to thrive in ambiguity and make decisions amidst multiple, competing demands and activities
• Proficiency in engineering, strong creative abilities, and scientific principles.
• Understanding of basic business concepts, strategies, and risks
• Broad IP experience, including patent prosecution, freedom-to-operate, opinion preparation, licensing, and IP transactions
• Litigation experience
• Data science and AI experience
• Ability to develop compelling presentation, engage senior leaders with confidence, and distill complex information into business language
• Possess a strong commitment to company values