Senior Principal IP Legal Counsel, Cranial & Spinal Technologies (CST)

Practice Areas: Intellectual Property Job #: 21000TSU Exp.: 8+ Years
Description:
Senior Principal IP Legal Counsel position to provide intellectual property legal support to the Medtronic Cranial and Spinal Technology (CST) operating unit (OU). Senior Principal IP Legal Counsel is responsible for managing the creation, communication, and effective execution of the IP strategy and will support the OU on all aspects of IP support (see A Day in the Life below).

As a key team member, this individual must be a highly motivated self-starter who is comfortable both collaborating as part of a larger team at the senior leadership level and working independently to provide support for high growth, fast moving businesses. The ability to deliver clear, concise, and actionable legal advice to business leaders and executive management is essential. If building IP strategies, seeing them through to execution, advising on complex IP legal issues, and contributing to a collaborative and successful IP legal culture excites you, this could be a great experience for you.

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, Memphis, TN, or any of our other US Medtronic office locations. Remote work options will be considered as business clients operate from several U.S. and worldwide Medtronic locations.

A Day in the Life
Responsibilities may include the following and other duties may be assigned.

Protect Medtronic’s Pipeline
  • Develop and implement a global patent portfolio strategy; oversee the preparation and prosecution of patent applications and patent maintenance decisions in support of the global business strategy
  • Manage IP risk for Medtronic’s pipeline; perform global freedom to operate evaluations, including preparing or obtaining opinions
  • Diligently manage the IP docket, leveraging corporate systems and resources
  • Provide support on patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositions
  • Protect Medtronic’s highest value R&D investments by managing invention disclosures and prioritizing filings with the highest level of impact
  • Demonstrate appropriate technical acumen

Support Medtronic’s Ability to Compete
  • Analyze and develop actionable IP portfolios directed at competitors; mine current portfolio and identify third party portfolios for possible acquisition
  • Perform claims analysis, construction, and drafting
  • Ensure ongoing awareness of competitors’ products, activities, and IP portfolios
  • Consult on, draft, and negotiate agreements and contract clauses, as needed, to support business operations
  • Conduct benchmarking activities for IP portfolio valuation and budget allocations
  • Operate within budget constraints for outside counsel and third-party vendor spend

Grow Medtronic’s Business
  • Perform IP due diligence for mergers and acquisitions with a solution-focused approach
  • Assist in the drafting and negotiation of agreements involving the transfer or licensing of intellectual property
  • Manage stakeholder expectations through proactive and clear communications
  • Direct brainstorming and make filing decisions to ensure expansive protection of new technologies and therapies, including ensuring coverage of whitespace
  • Partner with portfolio strategy, upstream marketing, business development and competitive intelligence functions to perform landscaping activities for future opportunities

Be a Strategic and Inclusive IP Partner
  • Develop strategic relationships with operating unit leaders, marketing, business development, and R&D to integrate IP into the overall operating unit strategy and provide IP advice and counsel
  • Educate key internal stakeholders on IP activities, competition, and outcomes of IP strategy execution
  • Develop strategic relationships with and manage outside counsel to accomplish key deliverables on time and on budget
  • Partner across the IP team to share and leverage insights and best practices; partner with IP COEs (litigation, BD, trademarks, data/AI, and patent portfolio strategy) to deliver optimal outcomes
  • Partner across multiple legal functions to coordinate and align on a cohesive legal strategy for the OU
  • Model the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right way
  • Must Have: Minimum Requirements
  • J.D. from a nationally accredited law school with strong academic credentials
  • 8+ years of experience as an attorney in intellectual property law
  • Licensed to practice in at least one state or the District of Columbia
  • Registered to practice before the U.S. Patent and Trademark Office

Nice to Have:
  • Bachelor's Degree in Mechanical Engineering, Computer Science, or Electrical Engineering or similar scientific disciplines
  • Medical device experience
  • Both in-house and law firm experience
  • Excellent judgment, strong strategic and analytical thinking, and ability to work on multiple projects at the same time
  • Able to thrive in ambiguity and make decisions amidst multiple, competing demands
  • Understanding of business concepts, strategies, and risks
  • Demonstrated strong collaboration and relationship-building skills to work across stakeholders at all levels of an 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
  • Knowledge of data science and AI
  • Experience in managing a significant workload, with the ability to juggle multiple projects simultaneously and prioritize across multiple tasks while remaining organized

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