Senior Counsel - IP (AI)

About the role

The Senior Counsel, Intellectual Property position is located in Alameda, CA. This role is part of Abbott Medical Devices' Diabetes Care business.

Responsibilities

• Strategically develop worldwide patent portfolio, including directing and managing outside counsel for patent applications aligned with strategic objectives.
• Review outside counsel work product to ensure methodology, strategy, and costs meet Abbott's expectations.
• Manage and direct pipeline portfolio by soliciting/inventing disclosures, conducting inventor interviews, and presenting disclosures at cross-functional patent committee meetings.
• Conduct in-depth analyses of competitor products and IP portfolios.
• Conduct employee training on protecting Abbott innovations, developing intellectual property assets, and maintaining confidential business information.
• Assist internal and external litigation counsel on IP litigation matters.
• Conduct due diligence on potential mergers, acquisitions, and investment opportunities.
• Collaborate with commercial legal counsel, including preparing and reviewing license agreements, various standard agreements, and counseling the Operating Division regarding IP transactional matters.
• Provide advice and strategic options for marketing and promotional materials.

Qualifications

• 7+ years of experience practicing patent law in a law firm or a corporation.
• Ability to handle multiple projects in a fast-paced environment and exercise sound commercial and legal judgment.
• JD from an accredited law school, admitted to and in good standing with (i) a U.S. state bar and (ii) the USPTO.

Skills

• Strong knowledge of patent law.
• History of success advising clients on intellectual property issues.
• Building competitive IP portfolios.
• Clearing products in the Medical Devices or similar space.
• Patenting AI, Machine Learning, Software, and Digital inventions in the Medical Device space.
• A working knowledge of patent law in major jurisdictions outside the U.S.
• Experience with adversarial USPTO and/or European Patent Office proceedings.
• Patent litigation experience.
• Transactional experience.

Benefits

Base pay for this position is $172,000.00 – $344,000.00. In specific locations, the pay range may vary from the range posted.