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Senior Patent Counsel

Job Type: Full time
Company/Firm: Medtronic
Location: Minneapolis, MN
Date posted: 03/27/10
Salary: Salary dependent on experience
Job Description:

 Position Description

Provide intellectual property services to Medtronic Neuromodulation (see Job Responsibilities below)

• Prepare and prosecute patent applications for Neuromodulation with a focus on electrical neurostimulation systems and therapies including, but not limited to, spinal cord stimulation, deep brain stimulation and pelvic floor stimulation.
• Drive strategic business processes for creation and management of intellectual property, including developing and implementing IP strategies, administration and evaluation of invention disclosures, conducting various patent searches, conducting freedom-to-practice evaluations and preparing or obtaining appropriate opinions, cognizant of competitor products and related IP watches, conducting infringement investigations and initial invalidity analyses, and providing timely counsel on intellectual property issues.
• Coordinate and monitor outside intellectual property counsel work.
• Negotiate and prepare license and confidentiality provisions agreements involving technology and intellectual property (e.g., contracts for clinical study) and assist in the drafting and negotiation of all agreements involving the transfer or licensing of intellectual property.
• Interface with research and product development and business development groups, including proactive development and implementation of IP strategies, invention disclosure reviews, search reports and client counseling and to conduct IP due diligence.
• Assist in developing and implementing policies and procedures relating to intellectual property.

• Requirement:  Strong academic and technical credentials.  A Juris Doctor from a recognized, accredited U.S. law school and licensed to practice in at least one state or the District of Columbia with the ability to ultimately be admitted in Minnesota; registered to practice before the U.S. Patent and Trademark Office; minimum of a Bachelor's Degree in Electrical Engineering; demonstrated ability to draft high quality patent applications and related patent prosecution documents.
• Proficient with PTO procedures and practice.
• Experience working with engineering and scientific principles in a technical role or in prosecuting patent applications applying these principles.
• A minimum of 5 years patent preparation and prosecution experience.
• Strong computer skills including experience with Microsoft Office applications

• Advanced degree in electrical engineering or closely allied field
• Experience drafting and prosecuting patent applications for medical devices
• Experience working in private practice and/or USPTO; 2 or more years of in-house legal practice
• Experience working on a variety of IP related agreements, transactions, and product clearance.
• Excellent written and verbal communication skills.
• Ability to work on multiple projects at the same time.
• Superior common sense and judgment.
• Integrity and strong ethical center
• Capable of inspiring trust and confidence of client groups.
• Flexibility, adaptability, responsiveness and collegiality.
• Strong interpersonal skills and the ability to become an integral part of a business team.
• Work independently with minimal supervision and effectively contribute as a team player, on legal, technical and business teams.
• Respond timely in a fast moving environment. Handle pressure and adapt to shifting priorities


Necessary Experience:


Contact: Please apply online at

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