Sr. Principal IP legal Counsel - Diabetes at Medtronic

Los Angeles, California, United States

Medtronic Logo
Not SpecifiedCompensation
Senior (5 to 8 years), Expert & Leadership (9+ years)Experience Level
Full TimeJob Type
UnknownVisa
Healthcare, Medical Devices, Diabetes TechnologyIndustries

Requirements

  • Comfort and confidence in communicating intellectual property advice in a clear and succinct way to management
  • Ability to deliver clear, concise, and actionable legal advice
  • Experience in preparing and prosecuting patent portfolios worldwide
  • Proficiency in managing and reviewing outside counsel work
  • Skill in diligently managing dockets using corporate docketing systems
  • Capability to implement patent maintenance decisions
  • Ability to interface with R&D and business development teams for proactive IP strategy development
  • Expertise in managing invention disclosures and prioritizing filings
  • Knowledge of leveraging existing patent applications to develop IP assets
  • Experience in performing global freedom-to-operate evaluations and overseeing opinions of counsel
  • Support experience in patent litigation, pre-suit assessments, USPTO post-grant proceedings, and EPO oppositions
  • Background in IP due diligence for mergers/acquisitions
  • Skills in drafting and negotiating IP agreements (e.g., patent licensing, joint-development, material transfer, acquisition agreements)
  • Ability to determine if inventions should be protected as patents or trade secrets
  • Proficiency in directing, developing, and analyzing patent searching strategies for patentability, invalidity, and competitive landscape
  • Awareness of competitors’ products, activities, and IP portfolios
  • Ability to operate within budget constraints for outside counsel and third-party vendors

Responsibilities

  • Provide intellectual property legal support to the Medtronic Diabetes Operating Unit
  • Implement global IP strategies
  • Develop strategic IP portfolios for medical technologies
  • Support product development and research through proactive IP counseling and education
  • Support M&A activities and related licensing transactions
  • Advise R&D and business on various IP matters
  • Execute all aspects of creation and management of intellectual property
  • Prepare and prosecute a patent portfolio worldwide in support of global business and IP strategies
  • Manage IP risk for Medtronic’s pipeline, including freedom-to-operate evaluations
  • Provide support on patent litigation, pre-suit assessments, and patent office proceedings
  • Assist in IP due diligence for mergers/acquisitions with a solution-focused approach
  • Draft and negotiate IP agreements
  • Direct brainstorms and make filing decisions for expansive protection of new technologies and therapies, including whitespace coverage
  • Develop strategic relationships with operating unit leaders, marketing, business development, and R&D to integrate IP into overall strategy
  • Manage stakeholder expectations through proactive and clear communications
  • Protect Medtronic’s highest value R&D investments by managing invention disclosures and prioritizing filings
  • Ensure ongoing awareness of competitors’ products, activities, and IP portfolio

Skills

Patent Prosecution
IP Strategy
Intellectual Property Management
Patent Portfolio Management
M&A IP Support
Licensing Transactions
IP Counseling
Medical Device IP

Medtronic

Develops and manufactures medical devices and therapies

About Medtronic

Medtronic provides medical technology, services, and solutions to improve patient care. The company develops a variety of medical devices, including pacemakers, insulin pumps, surgical tools, and neurostimulation devices, which help diagnose, prevent, and treat chronic diseases. These products are used by hospitals, clinics, and healthcare professionals around the world. Medtronic stands out from competitors by investing significantly in research and development to create new products and offering additional services like training and patient management programs. The goal of Medtronic is to enhance patient outcomes and lower healthcare costs through its comprehensive range of medical solutions.

Fridley, MinnesotaHeadquarters
1949Year Founded
$3.2MTotal Funding
IPOCompany Stage
Biotechnology, HealthcareIndustries
10,001+Employees

Benefits

Health Insurance
Dental Insurance
Vision Insurance
Life Insurance
Disability Insurance
Health Savings Account/Flexible Spending Account
Unlimited Paid Time Off
Paid Vacation
Paid Sick Leave
Paid Holidays
401(k) Retirement Plan
401(k) Company Match
Employee Stock Purchase Plan
Employee Assistance Program
Wellness Program

Risks

Emerging competitors like Fire1 threaten Medtronic's heart failure management market share.
Spine biologics market growth may attract new entrants, increasing competition for Medtronic.
Recent IPOs in medtech indicate rising competition, challenging Medtronic's market position.

Differentiation

Medtronic's diverse product range spans cardiovascular, diabetes, neurological, and surgical technologies.
The company invests heavily in R&D to drive innovation in medical devices.
Medtronic offers comprehensive services, including training and technical support, enhancing product value.

Upsides

Exclusive deal with Kuros enhances Medtronic's orthopedic portfolio and market share.
Growing spine biologics market offers expansion opportunities in spinal fusion and regenerative medicine.
Balloon catheters market growth aligns with Medtronic's recent product launches, boosting cardiovascular presence.

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