Summary of Position with General Responsibilities:
Becton, Dickinson & Company is seeking a patent attorney with 5-10 years legal experience to be located at its Peripheral Intervention business unit in Tempe, AZ. The general responsibilities include managing the IP work including patent preparation and prosecution, freedom to operate analysis and diligence. This position reports to the Associate General Counsel, IP and is a dedicated, full-time position to support a leading medical device company’s growing global IP practice. The successful candidate must be able to work independently, develop and maintain strong relationships with the business and R&D communities.
Essential job Functions:
The following duties and responsibilities are intended to be representative of the work performed by the incumbent in this position and are not all-inclusive. The omission of a specific duty or responsibility will not preclude it from the position.
Identification and management of IP assets and protection of inventions, trade secrets, and related IP matters. Educate and advise BD associates on intellectual property issues.
Work with engineers and scientists in R&D to identify patentable or otherwise protectable IP assets; obtain disclosure of inventions for preparation of patent applications in the U.S. and abroad.
Manage patent prosecution worldwide, including providing direction to outside counsel globally.
Conduct and evaluate prior art searches, monitor third party patent activity in areas of interest and manage offensive and defensive patent challenges in global patent offices.
Work closely with outside counsel in the assessment of product designs for infringement studies as well as non-infringement/invalidity and clearance opinions in support of R&D programs and M&A activities.
Assist with the development and implementation of patent strategies including analysis of BD and competitors’ patent portfolios. Assist, as appropriate, with management of IP litigation. Assist, as appropriate, with IP elements of agreements.
Additional areas of responsibility as assigned based upon business and IP Law Group needs.
Bachelor’s or higher in engineering or science, preferably in mechanical or biomedical
Juris Doctor from an ABA accredited law school
Admitted to practice before the U.S. Patent and Trademark Office
Member of at least one U.S. state bar
At least 5 years legal experience with patent preparation and prosecution
Excellent oral and written communication skills
Ability to work with minimal supervision
Superior organizational skills are essential
Additional Desirable Qualifications Skills and Knowledge:
Team player who is able to interact collegially with outside counsel, other members or the law department and company personal at all levels of the organization
Must be able to communicate complex IP concepts and issues to lay management clearly and effectively, using well-organized and systematic presentation styles
Strong Drafting and negotiation skills; licensing and litigation background a plus
Experience with global patent filing strategies and with US and European post-grant patent office proceedings
Experience with Anaqua patent docketing system a plus
In-house experience, preferably in medical device industry a plus.