Intellectual Prop Counsel III

About the role

The Senior Principal IP Legal Counsel will join the Medtronic IP Mergers & Acquisitions Center of Excellence ("IP M&A COE") legal team, leading and setting best practices for IP-related transactions and due diligence processes across the enterprise. This role provides IP advice and support to the Corporate Development and Ventures teams, as well as operating unit legal teams, in connection with M&A projects, divestitures, and structured investments.

Responsibilities

• Negotiate, draft, analyze and revise complex IP and technology agreements, including licenses, joint ventures, and collaborations, as well as IP-related provisions of M&A and divestiture agreements.
• Evaluate and analyze intellectual property portfolios, including patents, trademarks, copyrights, and trade secrets of target companies.
• Identify and analyze potential IP litigation and other IP risks related to the potential transaction, with proactive counseling on mitigations in view of the same.
• Advise senior legal leadership, business development teams, and operating unit business leaders on IP risks and issues, including infringement, validity, freedom-to-operate, and ownership.
• Collaborate with other attorneys (including operating unit IP and commercial attorneys, COE attorneys, and outside counsel) and professionals in cross-functional teams to support M&A and business development activities and procedures at Medtronic.
• Forge strong relationships with deal teams and other clients across Medtronic by proactively providing strategic, business-oriented IP advice and services.
• Manage multiple projects simultaneously and prioritize tasks effectively to achieve key deliverables on time and on budget.
• Monitor changes to the evolving competitive landscape for medical device and healthcare technology.

Requirements

• Juris Doctor from a recognized, accredited U.S. Law School.
• Licensed to practice in at least one state or the District of Columbia.
• 8+ years of relevant in-house and law firm experience in intellectual property law, including substantial experience conducting and/or overseeing IP due diligence assessments, as well as drafting and negotiating IP-related provisions of M&A transactions and license agreements.

Qualifications

• Bachelor’s degree or higher in engineering or other technical or scientific field.
• Registered to practice before the U.S. Patent and Trademark Office (not essential, but strongly preferred).
• Broad intellectual property experience, including patent prosecution, litigation, trademark, contracts, freedom-to-operate, opinion preparation, licensing, and intellectual property negotiations.
• Experience working with clients in the medical device industry.
• Strong attention to detail, organizational skills, and client service mindset.
• Excellent judgment, strong strategic and analytical thinking, and ability to work independently and collaboratively on multiple projects at the same time in a fast-paced environment.
• Excellent written, verbal and listening communications skills, including the ability to develop compelling presentations, engage senior leaders with confidence, and distill complex technical and legal information into business language.
• Experience in managing a significant workload, with the ability to juggle multiple projects simultaneously and prioritize across multiple tasks while remaining organized.

Skills

• Strong negotiation and contract drafting skills.
• Proactive problem-solving and strategic thinking abilities.
• Ability to manage multiple projects and priorities.
• Knowledge of IP issues that typically arise in connection with M&A transactions and common ways to resolve them.

Benefits

• Competitive Salary and flexible Benefits Package.
• Health, Dental and vision insurance.
• Health Savings Account, Healthcare Flexible Spending Account.
• Life insurance, Long-term disability leave.
• Dependent daycare spending account, Tuition assistance/reimbursement.
• Simple Steps (global well-being program).