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Sr. Principal Intellectual Property Counsel

Fridley, MN 55432
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Sr. Principal Intellectual Property Counsel


Fridley, Minnesota, United States

Requisition #:


Post Date:

Aug 08, 2019

**Careers that Change Lives**

This position has the responsibility and authority to support the Restorative Therapies Group (RTG). This individual 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. This position will report to the Senior Legal Director, Intellectual Property.

**A Day in the Life**

Responsibilities may include the following and other duties may be assigned.

+ Prepare and prosecute U.S. and foreign patent applications.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 RD 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.

**Must Have: Minimum Requirements**

+ JD

+ Registration to practice before the US Patent and Trademark Office

+ Current member of a state bar or DC bar and the ability to obtain Minnesota or Colorado state bar membership

+ Minimum 8 years of experience in patent and intellectual property law disciplines

**Nice to Have**

+ Bachelors or Masters Degree in Computer Science, Computer Engineering, Electrical Engineering or similar scientific discipline

+ Excellent judgment and written and verbal communication skills

+ Analytical thinking and ability to work on multiple projects at the same time

+ Medical device experience

+ 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

+ Aptitude in various Intellectual Property legal issues, including, trade secret, copyright, trademark, trade dress and open source

+ Direct experience with engineering or science

+ Excellent priority-setting skills, excellent people skills to deal with direct client contact and management

+ Proficiency in engineering, strong creative abilities and scientific principles

+ Demonstrated abilities as a skilled communicator to diverse audiences

+ Possess excellent judgment

+ Demonstrated strong analytical thinking ability

+ Proven experience in working on multiple projects simultaneously

+ Possess the ability to work in an autonomous environment

+ Possess a strong commitment to company values

**About Medtronic**

Together, we can change healthcare worldwide. At Medtronic, we push the limits of what technology, therapies and services can do to help alleviate pain, restore health and extend life. We challenge ourselves and each other to make tomorrow better than yesterday. It is what makes this an exciting and rewarding place to be.

We want to accelerate and advance our ability to create meaningful innovations - but we will only succeed with the right people on our team. Lets work together to address universal healthcare needs and improve patients lives. Help us shape the future.

Physical Job Requirements

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.

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.

Travel: 15%.
It is the policy of Medtronic to provide equal employment opportunity (EEO) to all persons regardless of age, color, national origin, citizenship status, physical or mental disability, race, religion, creed, gender, sex, sexual orientation, gender identity and/or expression, genetic information, marital status, status with regard to public assistance, veteran status, or any other characteristic protected by federal, state or local law. In addition, Medtronic will provide reasonable accommodations for qualified individuals with disabilities.


Posted: 2019-08-13 Expires: 2020-02-23
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Sr. Principal Intellectual Property Counsel

Fridley, MN 55432

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