Senior Counsel, Intellectual Property

Dublin, OH
Full Time
09-11-2019
Practice Areas: Intellectual Property Job #: 20055160 Exp.: 7+ Years
Description:
What Intellectual Property (Atty) contributes to Cardinal Health
Intellectual Property is responsible for providing legal advice, counsel and services in the areas of intellectual property (patent, trademark, and copyright) law

Reporting to the Assistant General Counsel, Intellectual Property, the Senior Counsel will have the following accountabilities:
  • Patent Risk Identification/Mitigation. Work with R&D, Marketing, Product Development, Global Sourcing and Manufacturing teams (both in the US and abroad) to review product and service offerings and provide guidance on the level of risk involved. Provide practical, business-minded options for risk mitigation. Monitor the patent-filing activity of key competitors and provide guidance/feedback to the Company’s business units regarding patents/applications of-interest.
  • Patent Strategy Development. Work with the Assistant General Counsel, Intellectual Property and the Company’s business units to develop and execute patent strategies that support long-term business objectives. Work with R&D, Marketing and Product Development teams (both in the US and abroad) on patentable products and services, applying a practical perspective for patent protection. Stay informed of key product and portfolio development initiatives.
  • Patent Portfolio Management. Support the Company’s efforts to identify, evaluate, seek, obtain and maintain patent protection throughout the world. Working with outside counsel, manage, the drafting and prosecution of patent applications in those countries where the Company has chosen to seek protection. Work with R&D, Marketing and business leaders at key stages of prosecution to ensure that actions taken are consistent with the Company’s business strategies.
  • Supervisory Responsibility. Will have certain responsibilities over activities performed by outside counsel. May have responsibility for supervising certain activities of in-house paralegals.
  • Operational Excellence. Support the IP team’s operational excellence initiatives. Participate in helping define/execute IP team policies, procedures and best-practices necessary for the team and outside counsel to conduct patent procurement activities efficiently, accurately, on-time and with minimal waste/re-work.

Qualifications
  • Juris Doctorate degree with BS degree in science or engineering
  • License to practice law in Ohio or active bar license in another state; registration to practice before the USPTO, a plus
  • A minimum of 7 years of legal experience practicing intellectual property law
  • Recent law firm experience and some in-house experience preferred
  • Prior experience directly advising clients on patent risk mitigation / non-infringement and general intellectual property matters preferred
  • Hands-on experiencing preparing/prosecuting US/PCT patent applications (and related foreign patent applications) preferred
  • Technical experience with medical devices/products preferred
  • Experience advising on Intellectual Property in commercial transactions, technology transfer, licensing, trade secret protection, and product design and configuration counseling are each a plus.
  • Ability to juggle multiple tasks and prioritize under tight time constraints
  • Self-motivated and independent, but able to discern when matters should be escalated and when further guidance is needed
  • Excellent communication skills, both written and oral, including ability to translate legal advice into practical guidance for non-lawyers

What is expected of you and others at this level
  • Applies advanced knowledge and understanding of concepts, principles, and technical capabilities to manage a wide variety of projects
  • Participates in the development of policies and procedures to achieve specific goals
  • Recommends new practices, processes, metrics, or models
  • Works on or may lead complex projects of large scope
  • Projects may have significant and long-term impact
  • Provides solutions which may set precedent
  • Independently determines method for completion of new projects
  • Receives guidance on overall project objectives
  • Acts as a mentor to less experienced colleagues

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