Senior Counsel, Intellectual Property

Company: Abbott Laboratories
Location: Schaumburg
Posted on: May 28, 2023

Job Description:

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 contribution.
• Tuition reimbursement, the student debt program and education benefit; our affordable and convenient path to getting a bachelors degree.
• 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 technological field.
  • 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 meetings.
  • 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 portfolios.
  • 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 leadership.
  • 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 litigation matters.
  • May supervise exempt or non-exempt employees, and manage employee career counseling, performance evaluation and other issues if required.
  • 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 property assets.
  • Provide counseling and strategy options on marketing and promotional materials.
  • Occasional domestic or foreign travel.Required Qualifications:Education
    • Juris Doctor from accredited law school and admitted to a US State Bar
    • 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 biochemistry; biology.Experience
      • 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 commercialized products.
      • 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, and tasks.
      • Strategic vision; able to develop and execute on an IP strategy.
      • At least 5 years of industry experience; along with Life Science experience
      • Software, app and digital FTO clearance and patent experience
      • Able to work in a collaborative environment.Preferred Qualifications:
        • 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 lives:
          • 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