Principal IP Legal Counsel

Key Skills

Aartificial intelligence, Data science techniques, Intellectual Property Law, 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 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

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 U.S. Patent and Trademark Office

Nice to Have

• Bachelor's Degree in Computer Science, or Electrical 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

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. For Office Roles: 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)

A commitment to our employees lives at the core of our values. We recognize their contributions. They share in the success they help to create. We offer a wide range of benefits, resources, and competitive compensation plans designed to support you at every career and life stage. Learn more about our benefits here.