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Intellectual Property Counsel Iii
Refer job# UDSW145837
Intellectual Property Counsel III The candidate will be responsible for coordinating IP strategies and develop IP portfolios for medical technologies in various businesses within RTG; supporting product development and research through proactive IP counseling and procurement; as well as educating clients regarding IP matters. Will report to the Senior Legal Director, Intellectual Property. Manage outside counsel in prosecuting U.S. and foreign patent applications. Manage the overall product release clearance/freedom to operation as it pertains to patents and intellectual property, including preparing clearance/freedom to operate opinions. Prepare intellectual property due diligence analyses for acquisition and divestiture matters as assigned. Prepare and/or review all types of agreements for R&D including CDAs, MTAs, license, development, consulting, etc. Manage assigned patent dockets via internal and external resources. Train and educate business personnel on invention disclosure processes, patent processes and IP asset management. Support patent litigation. Assist with the integration of new technologies in products through intellectual property counseling. Assist (from an IP standpoint) with approving submissions to regulatory bodies and governmental agencies. Assist (from an IP standpoint) with approvals for packaging and labeling changes. Provide legal counsel and guidance regarding trademarks for products. Work with physicians and others who provide idea submissions to the business. Direct and guide the focus of product development projects from an IP standpoint. Provide general guidance to business on patents and intellectual property. Work with Medtronics docketing system, create process mapping for patents and work with other on-line search databases. Develop and implement IP strategies for business divisions of the Restorative Therapies Group with the Senior Legal Director of IP, Technical and Business leaders. Complies with the Medtronic Site Quality System and procedures. Performs other duties as assigned.

The candidate should have Bachelor's or Master's degree in Computer Science, Computer Engineering, Software Engineering, Electrical Engineering or similar scientific discipline. JD degree required. Registration to practice before the US Patent and Trademark Office. Current member of a state bar or DC Bar essential. Must have 8+ years of experience in patent and intellectual property law disciplines. Medical device experience a must. Excellent judgment and written and verbal communication skills. Broad Intellectual Property law experience is preferred including, in addition to US patent preparation and prosecution, experience with global patent issues and practices, litigation, transactions and transactional due diligence. Direct experience with engineering or science. Excellent priority-setting skills, excellent people skills to deal with direct client contact and management. Understanding of basic business concerns, strategies, and risks. Proficiency in engineering, strong creative abilities and scientific principles.
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