Senior Counsel, Intellectual Property
Company: Abbott Laboratories
Posted on: May 28, 2023
Abbott is a global healthcare leader that helps people live more
fully at all stages of life. Our portfolio of life-changing
technologies spans the spectrum of healthcare, with leading
businesses and products in diagnostics, medical devices,
nutritionals and branded generic medicines. Our 115,000 colleagues
serve people in more than 160 countries.About AbbottAbbott is a
global healthcare leader, creating breakthrough science to improve
peoples health. Were always looking towards the future,
anticipating changes in medical science and technology.Working at
AbbottAt Abbott, you can do work that matters, grow, and learn,
care for yourself and family, be your true self and live a full
life. You will have access to:
- Career development with a global company where you can grow the
career of your dreams.
- Free medical coverage for employees* via the Health Investment
Plan (HIP) PPO.
- An excellent retirement savings plan with high employer
- Tuition reimbursement, the student debt program and education
benefit; our affordable and convenient path to getting a bachelors
- A company named one of the most admired companies in the world
by Fortune Magazine and recognized as a great place to work in
dozens of countries around the world.
- A company recognized as one of the best big companies to work
for, as well as a best place to work for diversity, working
mothers, female executives, and scientists.The Opportunity Based in
our headquarters office in Lake Bluff, Illinois this is a unique
opportunity to join Abbotts Legal Team. Reporting to the Division
Counsel this role will focused on Patent Law for our Diagnostic
Devices. Our diagnostic solutions are used in hospitals,
laboratories and clinics around the globe. The crucial information
derived from our tests, instruments and informatics systems are
often the first step in patient care decision making for hundreds
of health conditions from heart attacks to blood disorders to
infectious diseases and cancers.The successful candidate will
possess strong knowledge of patent law and demonstrated experience
counseling clients on intellectual property issues, drafting and
prosecuting patent applications, freedom-to-operate or product
clearance experience, preferably for Diagnostics Devices.What You
Will Work On:
- In close collaboration with other IP team members,
strategically develop our worldwide patent portfolio, including
directing and managing domestic and foreign outside counsel to
prepare and prosecute patent applications in a diverse and growing
- Participate in the effective management of our external budget,
including monthly, quarterly and annual budget reviews, quarterly
forecasting, and reviewing outside counsel invoices.
- Manage invention disclosures, including collecting and
screening disclosures, conducting inventor interviews, presenting
disclosures at patent committee and Invention Review Board
- Conduct due diligence on potential mergers and acquisitions and
freedom-to-operate assessments that drive strategic acquisitions
and product development.
- Conduct in-depth analyses of competitor products and IP
- Review outside counsel work to ensure the work, methodology,
strategy and costs meet Abbotts expectations.
- Collaborate with cross-functional teams and counsel a variety
of clients on IP and other legal issues.
- Interact with and provide legal and strategic guidance to
senior management, engineers and other functional organizational
- Collaborate with commercial legal counsel, including preparing
and reviewing research and development agreements, confidentiality
agreements, license agreements, and consulting agreements and
counseling the business regarding IP transactional matters.
- Assist internal and external litigation counsel on IP
- May supervise exempt or non-exempt employees, and manage
employee career counseling, performance evaluation and other issues
- Conduct employee training sessions on the protection of
innovations through the patent process, best practices for
maintaining confidential business information, contractor and
vendor matters, and the overall development of intellectual
- Provide counseling and strategy options on marketing and
- Occasional domestic or foreign travel.Required
- Juris Doctor from accredited law school and admitted to a US
- Undergraduate degree or an advanced degree in life sciences or
biology is required and comfort working in molecular biology, cell
biology, biochemistry, microbiology and/or immunology is preferred.
BS in engineering physics or life sciences biotechnology; chemistry
- Minimum of 10 years working as a patent attorney and counseling
clients on intellectual property issues. The successful candidate
must have experience prosecuting mechanical, electro-mechanical,
and software patent applications, conducting agreement review and
negotiations, as well as possess in-house IP experience, preferably
in the Diagnostics/Medical Device industry. Experience handling
PTAB/EPO Oppositions and supporting patent litigation a plus.
- Expensive experience in: A. transactions licenses, asset
purchases / negotiation skills and contract interpretation and
analysis; B. IPRs; European oppositions; C. US and foreign
prosecution experience; D. FTO clearance
- The ideal candidate is conversant in a spectrum of technical
areas across the biotechnology, and diagnostic industries, and is
able to handle global patent portfolios for developing and
- USPTO registration
- Excellent oral and written communication skills, 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,
- Strategic vision; able to develop and execute on an IP
- At least 5 years of industry experience; along with Life
- Software, app and digital FTO clearance and patent
- Able to work in a collaborative environment.Preferred
- Significant freedom-to-operate or product clearance experience,
preferably for Diagnostics products.
- At least 10 years of drafting and prosecuting patent
applications in the area of biotechnology and/or software and/or
managing a Diagnostics IP portfolio
- Working knowledge of patent laws in major jurisdictions outside
of the US
- Government (USPTO or EPO) and in-house experience a plus.*
Participants who complete a short wellness assessment qualify for
FREE coverage in our HIP PPO medical plan. Free coverage applies in
the next calendar year.
- Learn more about our health and wellness benefits, which
provide the security to help you and your family live full
- Follow your career aspirations to Abbott for diverse
opportunities with a company that can help you build your future
and live your best life. Abbott is an Equal Opportunity Employer,
committed to employee diversity.Connect with us at , on Facebook at
and on Twitter @AbbottNews and @AbbottGlobal.
Keywords: Abbott Laboratories, Schaumburg , Senior Counsel, Intellectual Property, Legal , Schaumburg, Illinois
Didn't find what you're looking for? Search again!
Loading more jobs...