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Karkidi

Principal IP Legal Counsel

Karkidi, Minneapolis, Minnesota, United States, 55400


A Day in the LifeResponsibilities may include the following and other duties may be assigned.Protect Medtronic’s Pipeline and Ability to CompeteExecute all aspects of creation and management of intellectual propertyPrepare and prosecute a patent portfolio worldwide in support of global business and IP strategies. Tasks include self-directed work, managing and reviewing outside counsel work, diligently managing dockets using the corporate docketing systems, and implementing patent maintenance decisionsInterface with the R&D and business development teams for proactive development and implementation of IP strategies that align with business strategy and objectivesProtect Medtronic’s highest value R&D investments by managing invention disclosures and prioritizing filings with the highest level of impactLeverage existing patent applications (i.e., mine) to develop IP assets that accommodate an evolving competitive landscapeSupport management of IP risk for Medtronic’s pipeline, including performing global freedom-to-operate evaluations and overseeing the preparation of opinions of counsel when necessaryProvide support on patent litigation, pre-suit assessments, and patent office proceedings, including USPTO post grant proceedings and EPO patent oppositionsSupport IP due diligence for mergers/acquisitions with solution-focused approachAssist in drafting and negotiating IP agreements, such as patent licensing agreements, joint-development agreements, material transfer agreements, and acquisition agreementsDetermine if invention should be protected as a patent or trade secretDirect, develop, and analyze thoughtful patent searching strategies for patentability, invalidity, and competitive landscapeEnsure ongoing awareness of competitors’ products, activities, and IP portfolioOperate within budget constraints for outside counsel and third-party vendor spendBe a Strategic and Inclusive IP PartnerDevelop 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 counselManage stakeholder expectations through proactive and clear communicationsDirect brainstorms and make filing decisions to ensure expansive protection of new technologies and therapies, including ensuring coverage of whitespacePartner with portfolio strategy, upstream marketing, business development, and competitive intelligence functions to perform landscaping activities for future opportunitiesEducate key internal stakeholders on IP activities, competition, and outcomes of IP strategy executionDevelop strategic relationships and manage outside counsel to accomplish key deliverables on time and on budgetPartner across the IP team to share and leverage insights and best practicesPartner with IP COEs (litigation, BD, trademarks, data/AI, and patent portfolio strategy) to deliver optimal outcomes to the operating unitPartner with operating unit commercial legal to coordinate and align on a cohesive legal strategy for the operating unitModel the Medtronic Mindset – act boldly; compete to win; move with speed and decisiveness; foster belonging; and deliver results the right wayMust Have: Minimum RequirementsJuris Doctor (J.D.) from a nationally accredited law school with strong academic credentials5+ years of experience as an attorney in intellectual property law disciplineLicensed to practice in at least one US state or the District of ColumbiaRegistered to practice before the U.S. Patent and Trademark OfficeNice to HaveBachelor's Degree in Computer Science, Electrical Engineering, or similar scientific disciplinesMedical device experienceBoth in-house and law firm experienceExcellent judgment, strong strategic and analytical thinking, and ability to work on multiple projects at the same timeAbility to prioritize across multiple tasks and demands while remaining organizedAble to thrive in ambiguity and make decisions amidst multiple, competing demands and activitiesProficiency in engineering, strong creative abilities, and scientific principlesUnderstanding of basic business concepts, strategies, and risksBroad IP experience, including patent prosecution, freedom-to-operate, opinion preparation, licensing, and IP transactionsLitigation experienceData science and AI experienceAbility to develop compelling presentations, engage senior leaders with confidence, and distill complex information into business languagePossess a strong commitment to company valuesAbout MedtronicTogether, 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. Let’s work together to address universal healthcare needs and improve patients’ lives. Help us shape the future.Physical Job RequirementsThe 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. (ADA-United States of America)A commitment to our employees lives at the core of our values. We recognize their contributions. They share in the success they help to create. We offer a wide range of benefits, resources, and competitive compensation plans designed to support you at every career and life stage. Learn more about our benefits here.

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