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IP Counsel BD/Licensing

Minneapolis, MN
Full Time
07-20-2021
Practice Areas: Intellectual Property Transactions, Mergers & Acquisitions Job #: 21000JAP Exp.: 5+ Years
Description:
This position is responsible for managing the IP legal aspects of a variety of business development and licensing transactional matters, on behalf of Medtronic. The BD/Licensing IP Counsel will develop and implement strategy for successful outcomes and assist in managing transactions to reach strategic objectives within budget; work closely with outside and in-house M&A counsel and operating unit IP counsel; engage in and drive early evaluation and resolution of IP issues uncovered in due diligence for transactions; and provide legal advice and counsel to business units on issues related to risk assessment and mitigation through effective contracting. This position reports to the IP Director, BD.

We believe that when people from different cultures, genders, and points of view come together, innovation is the result - and everyone wins. Medtronic walks the walk, creating an inclusive culture where you can thrive.

This position can reside in Minneapolis, MN or any of our other US Medtronic office locations.

A Day in the Life
  • Responsibilities may include the following and other duties may be assigned.
  • Developing, implementing and executing IP-specific strategies for Diligence, Freedom-to-Operate (FTO) Procedures, and Contract Provisions for BD and M&A (preferred terms, freedom-to-operate procedures, transaction case studies, training, communication and escalation procedures) at Medtronic to deliver optimal outcomes.
  • Modeling the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right way
  • Being a Strategic and Inclusive IP Partner
  • Building relationships across Medtronic (including BD and Strategy teams, Corporate Legal M&A, and individual Operating Units) to become an IP expert in and stay current with Medtronic’s business needs, risk profiles, and strategies
  • Collaborating with our engineering, marketing and BD teams to understand Medtronic’s competition, current portfolio, and emerging technologies.
  • Partnering with other key legal functions including the IP team, IP COEs (litigation, trademarks, data/AI, and patent portfolio strategy), Commercial legal and Corporate M&A teams to enable successful M&A activity and procedures at Medtronic.
  • Developing strategic relationships and managing outside counsel to accomplish key deliverables on time and on budget.
  • Monitoring changes to the evolving competitive landscape for medical device and healthcare technology.
  • Drafting, reviewing, and negotiating IP, partnership, acquisition, and other related agreements and IP-related provisions of the same.
  • Answering questions and offering training and practical legal advice on a wide range of IP and other issues directed to M&A activities.
  • Demonstrating appropriate technical acumen.
  • Comfort and confidence in communicating IP advice in a clear and succinct way to all levels of management is essential.

Must Have: Minimum Requirements
  • J.D.
  • 5+ years of experience in IP Transactions and M&A
  • Licensed to practice in at least one state or the District of Columbia with the ability to be admitted in California as RIHC; registered to practice before the U.S. Patent and Trademark Office

Nice to Have:
  • Bachelor's Degree in Computer Engineering, Computer Science, Electrical Engineering, or Biomedical Engineering or similar scientific disciplines
  • Demonstrated strong collaboration and relationship-building skills to work across stakeholders at all levels of the organization
  • Excellent written, verbal, and listening communications skills, including the ability to develop compelling presentations, engage senior leaders with confidence, and distill complex information into business language
  • The ability to prioritize across multiple tasks and demands and remain organized
  • Able to thrive in ambiguity and make decisions amidst multiple, competing demands and activities
  • A proactive partner with a pragmatic, solutions-oriented, and curious mindset
  • Working knowledge of PowerPoint, Excel and Word applications





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