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Senior Counsel – IP, Abbott

Posted 2 years ago—Illinois—Abbott-Park/Senior-Counsel—IP_30973190-1

United States – Illinois – Abbott Park

Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals, and branded generic medicines. Our 109,000 colleagues serve people in more than 160 countries.


Abbott is a global healthcare leader that helps people live more fully at all stages of life. Our portfolio of life-changing technologies spans the spectrum of healthcare, with leading businesses and products in diagnostics, medical devices, nutritionals and branded generic medicines. Our 107,000 colleagues serve people in more than 160 countries


Diagnostic testing is a compass, providing information that helps in the prevention, diagnosis and treatment of a range of health conditions.

Abbott’s life-changing tests and diagnostic tools give you accurate, timely information to better manage your health. We’re empowering smarter medical and economic decision making to help transform the way people manage their health at all stages of life. Every day, more than 10 million tests are run on Abbott’s diagnostics instruments, providing lab results for millions of people.

The successful candidate will possess strong knowledge of patent law and demonstrated experience counseling clients on intellectual property issues, drafting and prosecuting patent applications, freedom-to-operate or product clearance experience, preferably for Diagnostics Devices

Core Responsibilities:

  • In close collaboration with other IP team members, strategically develop our worldwide patent portfolio, including directing and managing domestic and foreign outside counsel to prepare and prosecute patent applications in a diverse and growing technological field;
  • participate in the effective management of our external budget, including monthly, quarterly and annual budget reviews, quarterly forecasting, and reviewing outside counsel invoices;
  • manage invention disclosures, including collecting and screening disclosures, conducting inventor interviews, presenting disclosures at patent committee and Invention Review Board meetings;
  • conduct due diligence on potential mergers and acquisitions and freedom-to-operate assessments that drive strategic acquisitions and product development;
  • conduct in-depth analyses of competitor products and IP portfolios;
  • review outside counsel work to ensure the work, methodology, strategy and costs meet Abbott’s expectations;
  • collaborate with cross-functional teams and counsel a variety of clients on IP and other legal issues;
  • interact with and provide legal and strategic guidance to senior management, engineers and other functional organizational leadership;
  • collaborate with commercial legal counsel, including preparing and reviewing research and development agreements, confidentiality agreements, license agreements, and consulting agreements and counseling the business regarding IP transactional matters;
  • assist internal and external litigation counsel on IP litigation matters;
  • may supervise exempt or non-exempt employees, and manage employee career counseling, performance evaluation and other issues if required;
  • conduct employee training sessions on the protection of innovations through the patent process, best practices for maintaining confidential business information, contractor and vendor matters, and the overall development of intellectual property assets;
  • provide counseling and strategy options on marketing and promotional materials;
  • occasional domestic or foreign travel.

Critical Success Factors:

  • Good Judgment: Demonstrate expertise and sound judgment, understand how assigned responsibilities support Abbott’s business objectives, and be able to provide practical, risk-balanced advice based upon a thorough understanding of the scope of an issue, taking full advantage of internal networks and external intelligence.
  • Collaboration: Firm understanding of available legal, functional, and business resources and ability to integrate information from a number of sources to achieve business results, including breaking down boundaries to create alignment as necessary, in a complex, global, matrixed environment.
  • Anticipation:  Holistic, big picture thinker, who anticipates changes in law, enforcement, and/or business objectives and adapts approach as necessary to manage risks effectively and mitigate issues before they arise.
  • Influencing Skills:  Build strong relationships with business partners to tactfully influence and gain their support to drive desired outcomes. Represent Abbott externally to [customers, suppliers, competitors, trade associations or government agencies]; and [resolve legal issues using negotiation skills and legal expertise/engage in external influencing efforts].

Required Qualifications:

  • Juris Doctor from accredited law school and admitted to a US state bar in good standing;
  • USPTO registration in good standing;
  • Strong academic background;
  • BS in engineering or physics;
  • Minimum of 10 years working as a patent attorney and counseling clients on intellectual property issues.  The successful candidate must have experience prosecuting mechanical, electro-mechanical, and software patent applications, conducting agreement review and negotiations, as well as possess in-house IP experience, preferably in the Diagnostics/Medical Device industry.  Experience handling PTAB/EPO Oppositions and supporting patent litigation a plus;
  • Excellent oral and written communication skills, interpersonal, facilitation, presentation, quantitative, analytical, organizational, and follow-up skills;
  • Strong interpersonal skills and strategic thinking;
  • Ability to understand and comply with applicable FDA regulations and Company operating procedures, processes, policies, and tasks.

Preferred Qualifications:

  • Significant freedom-to-operate or product clearance experience, preferably for Diagnostics products;
  • At least 10 years of drafting and prosecuting patent applications in the area of biotechnology and/or software and/or managing a Diagnostics IP portfolio
  • Working knowledge of patent laws in major jurisdictions outside of the US;
  • Government (USPTO or EPO) and in-house experience a plus.

About Abbott:

Employer of Choice: Through numerous local, national, and international accolades, Abbott is regarded as an employer of choice for our commitment to workplace excellence. Our employees are given the tools to succeed, lead and grow, with challenging opportunities and work that makes a difference. Through our diverse healthcare businesses, we connect people and potential in ways that no other company can. Discover a world of opportunities at Abbott.

Who We Are: We are legal professionals and business partners, and we use our expertise and judgment to guide Abbott’s businesses through the challenges that come with operating in complex global environments.

What We Offer: Abbott Legal provides meaningful and challenging work on a global scale. We are a dynamic organization and we develop our employees to meet the evolving needs of the company. 

How We Work: We are collaborative, curious, and pragmatic. We value diversity of background, experience, and thought in our teams. We are expected to be holistic thinkers who see the big picture, and make thoughtful, informed decisions.


Operations & Business Support


GENC General Counsel


United States > Abbott Park : AP06A Floor-1





Not specified


Not Applicable


Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day), Keyboard use (greater or equal to 50% of the workday)Abbott is an Equal Opportunity Employer of Minorities/Women/Individuals with Disabilities/Protected Veterans.EEO is the Law link – English: is the Law link – Espanol:

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