Skip to content

Medtronic – Principal Intellectual Property Counsel-MITG


Posted 3 years ago

Careers that Change Lives
The Minimally Invasive Therapies Group (MITG) strives to enable earlier diagnosis, better treatment, faster complication-free recovery, and enhanced patient outcomes through less invasive surgical solutions. We value what makes you unique. Be a part of a company that thinks differently to solve problems, make progress, and deliver meaningful innovations. Impact patient outcomes. Come for a job, stay for a career.

This position can reside in Minneapolis, MN or Mansfield, MA regions.

A Day in the Life

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

Within our key MITG business, the Renal Care Solutions (RCS) business is serving the global renal care market, a strategic priority for Medtronic.

Medtronic’s RCS business has a strong need for an IP partner that will:

  • Provide legal advice and service to Medtronic’s RCS business group on patents, copyrights, trademarks, trade secrets, and trade names including patentability of inventions, discovery, and avoiding infringement of patents.
  • Counsel the RCS business at all levels and across functions, including executive leadership, R&D, marketing, regulatory etc.
  • Coordinate closely with the RCS general counsel to align IP priorities
  • Coordinating with outside counsel to prepare, file, and prosecute patent applications to obtain the broadest possible protection for the company’s inventions.
  • Ensure all commercially important inventions are protected by valid patents and that products do not infringe valid third-party patents.
  • Ensure all commercially important trademarks (including words, names, symbols and logos) are protected by, e.g., valid trademark registrations.
  • Coordinating with outside counsel to handle appeal and interference proceedings.
  • Render opinions regarding infringement and validity of patents.
  • Provide advice to protect company’s interest in scientific/technical publications and with collaborators, communities and suppliers.
  • Coordinating with Medtronic’s commercial legal organization and outside counsel to negotiate and draft patent licenses and other agreements.
  • Conduct and evaluate state-of-the-art searches and infringement searches.
  • Represent RCS business in litigation with support from outside counsel and internal litigation resources.
  • Plan, track and manage an IP budget.

Must Have: Minimum Requirements

  • JD: Must have passed and retained attorney registration in at least one state and be in good standing
  • BS degree: Chemistry undergraduate degree or higher
  • USPTO Patent Bar Registration: Must have passed and retained USPTO patent bar registration in good standing
  • 5+ years of law firm or in-house experience performing and/or managing broad IP responsibilities

Nice to Have

  • In-depth knowledge and experience of:
    • patent preparation and prosecution
    • patent litigation support or management
    • right-to-use/freedom-to-operate searching, analysis and clearance
    • foreign IP practice 
  • Experience managing work with colleagues who are not geographically co-located
  • Ability to work with and influence all levels of management and employees within the IP organization
  • Excellent strategic planning skills
  • Exceptional presentation, oral and written communication skills
  • Ability to work with complex and sensitive information
  • Demonstrated ability to think creatively about how to do more with less
  • Experience counseling executives on complex legal issues
  • Clear thinking, superior communication skills 

Click the link for more information and to apply:

Apply Online