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Intellectual Property Counsel

Posted 2 days ago

SENIORITY

Manager

SALARY

$164,000.00 - $278,000.00

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About the role

Senior Principal IP Counsel At MiniMed, you can begin a lifelong career of exploration and innovation, while helping make a difference in the lives of people living with diabetes around the globe. You'll lead with purpose, breaking down barriers to innovation for a more connected, compassionate world.
About the Role: This Senior Principal IP Counsel role will provide intellectual property advice and counsel for MiniMed and will report directly to the VP, Chief Intellectual Property Officer. The Senior Principal IP Counsel will be responsible for implementing global IP strategies, leading and supporting IP M&A activities, leading and supporting IP litigation/freedom-to-operate activities, leading and supporting licensing transactions, and advising clients in R&D and the business on various IP matters. The Senior Principal IP Counsel will be responsible for delivering clear, concise, and actionable legal advice and exceptional work product that is practical and solutions-oriented. Comfort and confidence in communicating intellectual property advice in a clear and succinct way to management is essential. This role will focus primarily on four areas: IP mergers and acquisitions (M&A), IP litigation/freedom-to-operate, IP agreements, and patent portfolio monetization. The ideal candidate will have deep expertise in at least one of the two core practice areas: IP M&A or IP litigation/freedom-to-operate. They will also have demonstrated experience in IP agreements and the other core practice area. The ideal candidate will be comfortable regularly collaborating with other in-house IP attorneys who support Pumps, Sensors, and Algorithms technologies to deliver creative IP solutions for MiniMed. This position is an exciting opportunity to join MiniMed, a standalone, publicly traded medical device company focused exclusively on diabetes care. Formerly the Diabetes operating unit of Medtronic, MiniMed is now charting its own path forward with a clear mission to transform diabetes care through innovation, access, and improved outcomes. As an independent company, we are positioned to move with greater agility, accelerate innovation, and make an even greater impact on the lives of people living with diabetes. Preference will be given to Applicants who can work a hybrid schedule (3 days per week in-office) at a MiniMed hub in Northridge, CA, Minneapolis, MN, or Atlanta, GA. However, all applicants will be considered, including those seeking a remote position. Responsibilities may include the following and other duties may be assigned. Protect MiniMed's Pipeline and Strengthen MiniMed's Ability to Compete Execute all aspects of creation and management of intellectual property Interface with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectives. Serve as a trusted strategic advisor to R&D, business development, and business leadership in developing and implementing IP strategies aligned with MiniMed's long-term objectives. Lead and support identification, assessment, and management of IP risk for MiniMed's pipeline, including performing global freedom-to-operate evaluations and overseeing the preparation of opinions of counsel when necessary Lead and oversee patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositions Lead and support IP due diligence for mergers/acquisitions with solution-focused approach Draft, negotiate, and advise on complex IP agreements, such as, for example, patent licensing agreements, joint-development agreements, material transfer agreements, acquisition agreements Direct, develop, and analyze thoughtful patent searching strategies for patentability, invalidity, and competitive landscape Ensure ongoing awareness of competitors' products and activities Operate within budget constraints for outside counsel and third-party vendor spend. Direct outside counsel and third-party vendors on significant patent litigation, freedom-to-operate, transactional, diligence, and portfolio matters by establishing legal strategy, scope, budgets, timelines, and expected outcomes. Be a strategic and inclusive IP Partner Develop strategic relationships with business leaders, marketing, business development, and R&D to integrate IP into the overall operating unit strategy and provide IP advice and counsel Manage stakeholder expectations through proactive and clear communications Partner with portfolio strategy, upstream marketing, business development, and competitive intelligence functions to perform landscaping activities for future opportunities Educate key internal stakeholders on IP activities, competition, and outcomes of IP strategy execution Develop strategic relationships 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 other legal functions to deliver optimal outcomes for MiniMedMUST HAVE: MINIMUM REQUIREMENTS:Juris Doctor (J.D.) from a top-tier, nationally accredited law school with strong academic credentials 8+ years of experience as an Attorney in intellectual property law discipline Licensed to practice in at least one US state or the District of Columbia Deep expertise in at least one of the two core IP practice areas: IP M&A or IP litigation/freedom-to-operate, and demonstrated experience in IP agreements and the other core practice areaNICE TO HAVEBachelor's degree in Engineering, Computer Science, Physics, Chemistry or similar scientific disciplines Registered to practice before the U.S. Patent and Trademark Office (preferred) Medical device experience Experience with pumps and sensors, associated software, algorithms, data science and AIBoth in-house and law firm experience Excellent judgment, strong strategic and analytical thinking and ability to work on multiple projects at the same time Ability to prioritize across multiple tasks and demands while remaining organized Able to thrive in ambiguity and make decisions amidst multiple, competing demands and activities Proficiency in engineering, strong creative abilities, and scientific principles. Understanding of basic business concepts, strategies, and risks Ability to develop compelling presentations, engage senior leaders with confidence, and distill complex information into business language Possess a strong commitment to company values Physical Job Requirements The above statements are intended to describe the general nature and level of work being performed by employees assigned to this position, but they are not an exhaustive list of all the required responsibilities and skills of this position. The physical demands described within the Responsibilities section of this job description are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. For Office Roles: While performing the duties of this job, the employee is regularly required to be independently mobile. The employee is also required to interact with a computer and communicate with peers and co-workers. Contact your manager or local HR to understand the Work Conditions and Physical requirements that may be specific to each role.
Benefits & Compensation: MiniMed offers a competitive salary and flexible benefits package At MiniMed, we put people first. A commitment to our employees lives at the core of our values: We recognize their contributions. They share in the success they help create. We offer a wide range of benefits, resources, and competitive compensation plans designed to support you at every stage of your career and life. Salary ranges for U.S (excl. PR) locations (USD):$164,000.00 - $278,000.00 For roles located in California, Seattle WA, Washington DC, Boston MA, and New York City, the salary range is $181,000 - $309,000 USD.Actual compensation may vary based on factors including experience, education, certifications, skills, market conditions, internal equity, and geographic location. Compensation and benefits information pertains solely to candidates hired within the United States (local market compensation and benefits will apply for others).This position is eligible for a short-term incentive called the Short Term Incentive (STI).This position is eligible for an annual long-term incentive plan. At MiniMed, we are committed to supporting the well-being and financial security of our employees. Regular employees working 20 or more hours per week are eligible for a robust benefits package, including health, dental, and vision insurance, as well as access to a Health Savings Account, Healthcare Flexible Spending Account, life insurance, long-term disability leave, and a dependent daycare spending account. In addition, all regular employees enjoy incentive plans, a 401(k) plan with company match, short

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