Attorney, Intellectual Property
Job Requisition #: 11564
Date Posted: 09/07/2011
Category: Legal
Location: St. Paul - MN - USA
About Us
St. Jude Medical develops medical technology and services that focus on putting more control into the hands of those who treat cardiac, neurological and chronic pain patients worldwide. The company is dedicated to advancing the practice of medicine by reducing risk wherever possible and contributing to successful outcomes for every patient. St. Jude Medical is headquartered in St. Paul, Minn. and has four major focus areas that include: cardiac rhythm management, atrial fibrillation, cardiovascular and neuromodulation.
We are an Equal Opportunity/Affirmative Action Employer. We currently have the following opening in our Cardiovascular Division:
Job Overview
Assist the Chief Intellectual Property Attorney for the CVD division with creating and managing domestic and international intellectual property portfolios.
Essential Functions: List the significant/essential duties, tasks or responsibilities which employees in this position are actually required to perform.
Essential Functions:
1. (a) Collect, screen and manage invention disclosures; (b) conduct meetings with inventors and management teams to review invention disclosures; and (c) prepare and prosecute patent applications.
2. Participate in due diligence initiatives as they relate to intellectual property. Analyze competitors portfolios. Assist with patent clearance activities for new products/services and formulate non-infringement and invalidity positions as necessary.
3. Assist in managing outside patent and trademark counsel, including the assignment of matters, oversight of work, and the review of invoices. Assist outside litigation counsel with intellectual property litigation.
4. Educate employees as to the protection of innovations through the patent process, best practices for maintaining confidential business information, contractor and vendor matters, and the overall development or intellectual property assets. Help develop electronic and hardcopy training materials and give presentations on substantive legal areas related to intellectual property.
5. Draft and negotiate technology agreements, including, for example, research and development agreements, confidentiality agreements, license agreements and consulting agreements.
Qualifications:
JD from accredited law school-admitted to practice law in the state where office is located (i.e. Minnesota) or eligible for admission.
USPTO registration.
3 - 5+ years of experience prosecuting mechanical and/or electro-mechanical patent applications with a law firm and/or large corporation. Experience counseling clients with their patent, trademark and copyright issues.
Strong academic credentials, excellent analytical, communication and organizational skills.
Ability to weigh legal risks against business factors; ability to deliver proactive and innovative legal advice in a fast-moving, team oriented environment.
Ability to multi-task and work under deadlines.
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