Senior Legal Counsel - Intellectual Property

Additional Location(s):  N/A

Diversity - Innovation - Caring - Global Collaboration - Winning Spirit - High Performance

At Boston Scientific, we’ll give you the opportunity to harness all that’s within you by working in teams of diverse and high-performing employees, tackling some of the most important health industry challenges. With access to the latest tools, information and training, we’ll help you in advancing your skills and career. Here, you’ll be supported in progressing – whatever your ambitions.       

 

About the role:

 

This Intellectual Property (IP) Counsel will support the company’s Electrophysiology and/or Cardiac Rhythm Management and Diagnostics business segments and provide legal advice and service on patents, copyrights, trademarks, licensing, and related agreements. This includes evaluating patents and potential product infringement issues, overseeing outside counsel's preparation of patent applications and office action responses for filing in the U.S. Patent Office and foreign patent offices, participating in intellectual property aspects of mergers and acquisitions, representing the company in matters relating to intellectual property law, and providing other general legal advice where required. This position will be located in Arden Hills, Minnesota.

 

At Boston Scientific, we value collaboration and synergy. This role follows a hybrid work model requiring employees to be in our local office at least three days per week.

 

Boston Scientific will not offer sponsorship or take over sponsorship of an employment visa for this position at this time.

 

Your responsibilities will include:

 

• Directing the company's patent, copyright, trademark, and intellectual property protection
• Directing the preparation and prosecution of the U.S. and foreign patent and trademark applications through outside counsel
• Supporting intellectual property acquisition or license agreements with third parties related to mergers and acquisitions (M&A) transactions, acquisition, and licensing of patents and technology
• Reviewing third party patent portfolios for possible acquisition or licensing analysis
• Reviewing third party patents for product freedom-to-practice issues and preparing or obtaining appropriate opinions from outside counsel
• Providing legal advice in other areas such as: preparing and reviewing consulting agreements, confidentiality agreements, marketing promotional material, and other agreements
• Reviewing status of outside counsel work by meeting, communicating, and reviewing documentation ensuring the work, methodology, and costs meet the company’s expectations
• Facilitating Patent Review Board meetings by leading discussions, managing action items, and delegating responsibility for follow-up items to committee members ensuring resolution of agenda topics
• Providing IP training to BSC employees

 

Required qualifications:

 

• JD with strong academic background, admitted to a state bar in good standing
• Registered US Patent Attorney
• 5+ years legal experience with reputable law firms and/or corporate legal departments
• 3+ years patent prosecution experience
• IP litigation and/or M&A experience
• Experience drafting and negotiating IP agreements
• Excellent written and verbal communication skills and the ability to communicate effectively with a wide variety of internal and external stakeholders including legal, R&D, marketing, outside counsel, senior leaders, and third-party contacts
• Excellent collaboration skills including the ability to build partnerships and work collaboratively with others to meet shared objectives

 

Preferred qualifications

 

• Biomedical, electrical, or related engineering degree
• Medical device experience
• Acti