Senior Counsel - IP (AI)

Thornton Tomasetti; Alameda (CA); On-site; USD 172,000 - 344,000; Full time

Job summary

Abbott, based in Alameda, CA, seeks a Senior Counsel for Intellectual Property to lead worldwide patent strategy for the Diabetes Care business. You will coordinate internal teams and outside counsel to build robust IP assets and align filings with strategic goals.

You will also review litigation, manage due diligence for transactions, and provide counsel on licenses and confidential information practices while operating in a global, fast-paced environment.

Qualifications

• JD from an accredited law school.
• Admitted to and in good standing with a U.S. state bar and the USPTO.
• 7+ years of patent law experience in law firm or corporation.

Responsibilities

• Strategically develop and manage Abbott Diabetes Care worldwide patent portfolio.
• Direct outside counsel to prepare and prosecute patent applications.
• Solicit and develop invention disclosures; present at cross-functional patent committee meetings.
• Review outside counsel output for methodology, strategy, and costs.
• Assist IP litigation counsel and conduct IP due diligence for M&A opportunities.
• Collaborate on IP transactional matters including license agreements.

Skills

Patent law knowledge

Advising clients on IP

IP portfolios

Product clearance (Medical Devices)

AI/ML/Software in Medical Devices

International patent practice

Litigation & transactional IP

Education

Juris Doctor (JD)

Tools

USPTO

European Patent Office

Job description

Job Description

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 115,000 colleagues serve people in more than 160 countries. Our location in Alameda, CA currently has an opportunity for a Senior Counsel, Intellectual Property. Abbott Medical Devices is seeking a Senior Counsel for its Diabetes Care business. The position will take a team‑oriented approach to managing IP issues by partnering with the Diabetes Care business (“Operating Division”). The successful candidate will be responsible for managing and directing a diversity of intellectual property issues within our Diabetes Care business. We are looking for an individual who aspires to make valuable IP contributions to the broader organization.

Technical Skills

The successful candidate will possess strong knowledge of patent law and have a history of success advising clients on intellectual property issues, building competitive IP portfolios, and clearing products in the Medical Devices or similar space. Experience patenting AI, Machine Learning, Software, and Digital inventions in the Medical Device space is preferred. A working knowledge of patent law in major jurisdictions outside the U.S., experience with adversarial USPTO and/or European Patent Office proceedings, patent litigation experience and transactional experience are preferred.

Core Job Responsibilities

• In close collaboration with various levels of the Operating Division, strategically developing our worldwide patent portfolio, including directing and managing domestic and OUS outside counsel to prepare and prosecute patent applications that are aligned with strategic objectives;


• Review outside counsel work product to ensure the methodology, strategy and costs meet Abbott’s expectation;


• Manage and direct pipeline portfolio by soliciting/developing invention disclosures, conducting inventor interviews and presenting disclosures at cross‑functional patent committee meetings to align future filings with strategic direction;


• Conduct in‑depth analyses of competitor products and IP portfolios;


• Conduct employee training on protecting Abbott innovations, developing intellectual property assets and best practices for maintaining confidential business information;


• Assist internal and external litigation counsel on IP litigation matters;


• Conduct due diligence on potential mergers, acquisitions and investment opportunities;


• Collaborate with commercial legal counsel, including preparing and reviewing license agreements, various standard agreements and counseling the Operating Division regarding IP transactional matters;


• Provide advice and strategic options for marketing and promotional material.

Key Qualifications and Experience Required

• 7+ years of experience practicing patent law in a law firm or a corporation;


• Ability to handle multiple projects in a fast‑paced environment and exercise sound commercial and legal judgment;


• In addition to top‑notch legal skills and excellent interpersonal, strategic thinking, communication, and organizational skills JD from an accredited law school, admitted to and in good standing with (i) a U.S. state bar and (ii) the USPTO.

Location of Position

Alameda, CA

Critical Success Factors

1. Sound Judgment: Understands how assigned responsibilities advance Abbott’s business objectives and is able to timely/appropriately elevate practical, risk‑balanced, actionable advice, based upon a broad understanding of the scope of an issue, taking full advantage of internal networks and external intelligence.


2. Resourceful: Firm understanding of available legal, functional, and business resources and ability to integrate information from several sources to achieve business results, including breaking down boundaries to create alignment as necessary, in a complex, global, matrixed environment.


3. Anticipation: Curious, 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.


4. Influencing Skills: Build strong relationships with business partners to tactfully influence and gain their support to drive desired outcomes.

Significant Work Activities

• 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)

Work Shift

Standard

Travel

Yes, 10 % of the Time

Medical Surveillance

Not Applicable

Salary

The base pay for this position is $172,000.00 – $344,000.00. In specific locations, the pay range may vary from the range posted.

Job Family

Operations & Business Support

Division

GENC General Counsel

Location Address

United States > Alameda : 2701 Harbor Bay Parkway

EEO Statement

Abbott is an Equal Opportunity Employer of Minorities/Women/Individuals with Disabilities/Protected Veterans.

EEO is the Law link - English: http://webstorage.abbott.com/common/External/EEO_English.pdf

EEO is the Law link - Espanol: http://webstorage.abbott.com/common/External/EEO_Spanish.pdf

Company Overview

Abbott is about the power of health. For more than 135 years, Abbott has been helping people reach their potential — because better health allows people and communities to achieve more. With a diverse, global network serving customers in more than 160 countries, we create new solutions — across the spectrum of health, around the world, for all stages of life. Whether it’s next‑generation diagnostics, life‑changing devices, science‑based nutrition, or novel reformulations, we are advancing some of the most innovative and revolutionary technologies in healthcare, helping people live their best lives through better health. The people of Abbott come to work each day with relentless energy, enthusiasm and a promise to enhance the health and well‑being of millions of people. They push the boundaries to help manage and treat some of life’s greatest health challenges. An equal opportunity employer, Abbott welcomes and encourages diversity in our workforce.