Intuitive Surgical Careers
Intellectual Property Attorney
Primary Location: United States-California-US-CA-Sunnyvale
Requisition ID: 181824
Who is Intuitive Surgical? The numbers tell an amazing story. Learn more about our company.Joining Intuitive Surgical means joining a team dedicated to using technology to benefit patients by improving surgical efficacy and decreasing surgical invasiveness, with patient safety as our highest priority.
If you exemplify our values and want to be part of Company that is really passionate about providing value for the patients and customers we serve, this is the role for you.
The Intellectual Property Attorney will be responsible for identifying and protecting the company’s legal and intellectual property interests. The role requires the attorney to both manage and perform direct work on many varied intellectual property and legal matters, including patent, trademark, trade secret, licensing, contract, and litigation matters. The attorney will interact daily with engineers, engineering management, clinical specialists, and company executives. The attorney will also manage outside lawyers and supervise their work products to ensure that company legal and intellectual property rights are maximized
Roles and Responsibilities:
• Counsel engineers and engineering managers regarding patent and trade secret matters.
o Actively seek out and identify patentable subject matter.o Work with engineers and engineering managers to ensure that inventions are protected using the appropriate intellectual property protection scheme.• Counsel company executives about how best to protect and exploit new company intellectual property.
o Evaluate benefit of patent or trade secret protection for various particular inventions.o Evaluate benefit of applying for United States and foreign patents in various markets to protect particular inventions.• Prepare and prosecute United States and foreign patent applications to ensure inventions are properly protected.
o Ensure patent applications are filed to meet legal department production goal deadlines by working with inventors and outside lawyers.o Edit patent applications and responses to patent office actions authored by outside lawyers, both in the United States and in various foreign jurisdictions.o Personally author patent applications and responses to patent office actions.• Analyze various patents and patent portfolios owned by others.
o Personally conduct and/or supervise outside lawyers’ patent searches.o Advise company executives and engineering managers on potential infringement, validity, and freedom to operate matters.o Advise engineers and engineering managers on the impact of patent claims on proposed and current development work.o Advise company executives about value of patents and patent portfolios for possible license or purchase.• Advise company executives about enforcement of company legal and intellectual property rights.
o Conduct infringement analysis of competing products.o Prepare and present infringement analysis results to company executives.• Support intellectual property and business litigation matters.• Draft commercial contracts to cover a variety of commercial needs.
o Joint research and technical collaboration agreements.
o Intellectual property licensing agreements.o Other general commercial and intellectual property matters.Perform in-house IP analytics using an advanced search and analysis software and widely-used patent literature databases to assess licensing, partnering, or acquisition opportunities.
• Juris Doctorate• Membership in the CA State Bar required.• Registration with United States Patent and Trademark Office• 5+ years’ experience in patent application preparation and prosecution in the United States, under the Patent Cooperation Treaty, and working with non-U.S. counsels in various foreign jurisdictionsIn addition, in order to effectively perform the responsibilities of this position, the following skills are preferred:• Membership in the California State Bar• Strong academic background in engineering (mechanical or electrical preferred); practical engineering experience is preferred• Patent experience in medical device industry, preferably with surgical products• Ability to visualize object relationships in three dimensions (i.e., an intuitive understanding of machine operation)• Strong interpersonal skills and be willing to work closely with various executives, managers, employees, and employee teams• Strong writing, drawing, and oral communication skills—this includes the ability to communicate in down-to-earth, practical terms• Strong contract drafting experience, including experience in general commercial matters, joint development agreements, and intellectual property matters• Ability to manage multiple tasks within a rapidly changing environment
We will consider for employment qualified applicants with arrest and conviction records in accordance with fair chance laws.