Mechanical Attorney / Bioengineering Attorney / Chemical Engineering Attorney in Santa Clara, CA

In-House

Santa Clara, CA

Mechanical Attorney / Bioengineering Attorney / Chemical Engineering Attorney in Santa Clara, CA

Attorney

No

Summary:

Job Title: Sr. Counsel, Intellectual Property
Experience: Minimum of 10 years working as a patent attorney and counseling clients on intellectual property issues
Location: Santa Clara, CA
Salary: $164, - $329, (may vary in specific locations)
Employment Type: Full-time
Job Requisition ID: 31099013

Company Overview:
**MEMBERS ONLY**SIGN UP NOW***. is a global healthcare leader with a portfolio of life-changing technologies in diagnostics, medical devices, nutritionals, and branded generic medicines. With over 114,000 colleagues serving people in more than 160 countries, **MEMBERS ONLY**SIGN UP NOW***. is committed to helping people live more fully at all stages of life.

Job Description:
As the Sr. Counsel, Intellectual Property, you will be responsible for strategically developing the company's worldwide patent portfolio, including managing domestic and foreign outside counsel. This position will primarily focus on **MEMBERS ONLY**SIGN UP NOW***.'s product lines for the treatment of cardiac and vascular disease, as well as related digital solutions. You may also assist other **MEMBERS ONLY**SIGN UP NOW***. business units as needed.

Responsibilities:
- Manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, and presenting disclosures at patent committee and Invention Review Board meetings.
- Participate in the effective management of the external budget, including budget reviews, forecasting, and reviewing outside counsel invoices.
- Conduct due diligence on potential mergers and acquisitions and freedom-to-operate assessments.
- Conduct in-depth analyses of competitor products and IP portfolios.
- Review outside counsel work to ensure it meets **MEMBERS ONLY**SIGN UP NOW***.'s expectations.
- Collaborate with cross-functional teams and counsel clients on IP and other legal issues.
- Provide legal and strategic guidance to senior management, engineers, and other organizational leadership.
- Collaborate with commercial legal counsel on IP transactional matters.
- Assist with IP litigation matters.
- Conduct employee training sessions on protecting innovations, maintaining confidential business information, and developing intellectual property assets.
- Provide counseling and strategy options on marketing and promotional materials.
- May supervise employees and manage employee career counseling and performance evaluations.
- Occasional domestic or foreign travel may be required.

Qualifications:
- Juris Doctor from an accredited law school and admitted to a US state bar in good standing.
- USPTO registration in good standing.
- Strong academic background.
- BS in engineering (mechanical, chemical, or biomedical).
- Minimum of 10 years working as a patent attorney and counseling clients on intellectual property issues.
- Experience drafting and prosecuting mechanical and/or electro-mechanical patent applications and conducting agreement review and negotiations.
- Experience with PTAB/EPO Oppositions and supporting patent litigation is a plus.
- Significant freedom-to-operate or product clearance experience, preferably for medical device products.
- Excellent communication, interpersonal, facilitation, presentation, quantitative, analytical, organizational, and follow-up skills.
- Strong interpersonal skills and strategic thinking.
- Ability to understand and comply with applicable FDA regulations and company operating procedures, processes, policies, and tasks.

Preferred Qualifications:
- In-house IP experience, preferably in the medical device industry.
- At least 8 years of drafting and prosecuting patent applications in the area of medical devices and/or managing a medical device IP portfolio.
- Experience drafting and prosecuting chemical or polymer chemistry patent applications.
- Advanced degree (MSc, PhD) in engineering.
- Working knowledge of patent laws in major jurisdictions outside of the US.
- Government (USPTO or EPO) experience is a plus.

Benefits:
- Free coverage in HIP PPO medical plan for participants who complete a short wellness assessment.
- Health and wellness benefits to help employees and their families live full lives.
- Diverse opportunities for career growth and development.
- Equal Opportunity Employer committed to employee diversity.

How to Apply:
To apply for this position, visit the **MEMBERS ONLY**SIGN UP NOW***. website or follow the link provided in the job posting.

Equal Employment Opportunity:
**MEMBERS ONLY**SIGN UP NOW***. is an Equal Opportunity Employer of Minorities/Women/Individuals with Disabilities/Protected Veterans. For more information on equal employment opportunities, please refer to the EEO is the Law links provided on the **MEMBERS ONLY**SIGN UP NOW***. website.

Conclusion:
If you are a highly experienced patent attorney with a strong background in mechanical or electro-mechanical engineering and a passion for developing and protecting intellectual property, this may be the perfect opportunity for you. Join **MEMBERS ONLY**SIGN UP NOW***.'s team and help make a difference in the lives of people worldwide. Apply now to take the next step in your career journey with **MEMBERS ONLY**SIGN UP NOW***..