Counsel, IP - Future Opportunity (Finance)

Company Description
At Intuitive, we are united behind our mission: we believe that minimally invasive care is life-enhancing care. Through ingenuity and intelligent technology, we expand the potential of physicians to heal without constraints.
As a pioneer and market leader in robotic-assisted surgery, we strive to foster an inclusive and diverse team, committed to making a difference. For more than 25 years, we have worked with hospitals and care teams around the world to help solve some of healthcare's hardest challenges and advance what is possible.
Intuitive has been built by the efforts of great people from diverse backgrounds. We believe great ideas can come from anywhere. We strive to foster an inclusive culture built around diversity of thought and mutual respect. We lead with inclusion and empower our team members to do their best work as their most authentic selves.
Passionate people who want to make a difference drive our culture. Our team members are grounded in integrity, have a strong capacity to learn, the energy to get things done, and bring diverse, real world experiences to help us think in new ways. We actively invest in our team members to support their long-term growth so they can continue to advance our mission and achieve their highest potential.
Join a team committed to taking big leaps forward for a global community of healthcare professionals and their patients. Together, let's advance the world of minimally invasive care.
Job Description
Primary Function of Position

The Counsel - IP Attorney will be primarily responsible for managing and protecting the company's intellectual property assets in the medical robotics space, including system hardware, instruments, and accessories. The role may require the attorney to both manage and perform direct work on many varied intellectual property and legal matters, including patent, trade secret, licensing, contract, trademark, trade dress and litigation matters. The attorney will interact daily with engineers, engineering management, and clinical specialists. The attorney will also manage outside lawyers and foreign associates and supervise their work products to ensure that company legal and intellectual property rights are maximized.

Roles and Responsibilities

• Counsel engineers and managers about how best to protect and exploit new company intellectual property.
  • Evaluate the benefit of patent or trade secret protection for particular inventions.
  • Evaluate the benefit of applying for United States and foreign patents in various markets to protect particular inventions.
• Lead invention identification meetings, review invention disclosures for decisions on IP actions, and direct application drafting meetings
• Manage a substantial invention and international patent portfolio in designated technology areas, including:
  • Supervising the preparation and prosecution of United States and foreign patent applications to ensure inventions are properly protected.
  • Ensuring patent applications are filed to meet legal department production goal deadlines by working with product managers, inventors, and outside lawyers.
  • Review and edit patent applications and responses to patent office actions authored by outside lawyers, both in the United States and in various foreign jurisdictions.
  • Personally drafting patent applications and responses to patent office actions.
• Analyze various patents and IP portfolios owned by third parties.
  • Personally conduct and/or supervise outside lawyers' patent searches.
  • Advise engineers and engineering managers on the impact of patent claims on proposed and current development work.
• Support intellectual property and business litigation matters.
• Draft and negotiate commercial contracts to cover a variety of commercial needs.
  • Joint research and technical collaboration agreements.
  • Intellectual property licensing agreements.
  • Other general commercial and intellectual property matters.
• Participate in and lead cross-functional projects and initiatives involving the Legal Team.
• Perform in-house IP analytics using patent literature databases, advanced search and analysis software, and other available resources to assess licensing, partnering, or acquisition opportunities.
• Allocate and deploy Legal resources appropriately to advance the interests of Intuitive in a cost-effective and timely manner.

Qualifications
Required Skills and Experience

• Minimum of 6 years experience total directly drafting and prosecuting patent applications in the United States
• Exceptional familiarity with the Patent Cooperation Treaty and Paris Convention
• Experience working with non-U.S. counsels in various foreign jurisdictions
• This role will require working onsite 3 days/week in our Sunnyvale, CA office

Required Education and Training

• Juris Doctorate
• Membership in the CA State Bar, preferred
• Registration with United States Patent and Trademark Office

Working Conditions

• None

Preferred Skills and Experience

• Eligibility for Membership in the California State Bar
• Strong academic background in engineering (robotics, mechatronics, mechanical engineering, applied physics or biomedical engineering fields preferred); practical engineering experience is preferred

Compensation & Benefits:

We provide market-competitive compensation packages, inclusive of base pay + commission, benefits and equity. The salary range for this position is $195,200 - $280,800. It would not be typical for someone to be hired at the top end of range for the role, as actual pay will be determined based on several factors, including experience, skills, and qualifications.
Additional Information

Due to the nature of our business and the role, please note that Intuitive and/or your customer(s) may require that you show current proof of vaccination against certain diseases including COVID-19. Details can vary by role.

Intuitive is an Equal Opportunity Employer. We provide equal employment opportunities to all qualified applicants and employees, and prohibit discrimination and harassment of any type, without regard to race, sex, pregnancy, sexual orientation, gender identity, national origin, color, age, religion, protected veteran or disability status, genetic information or any other status protected under federal, state, or local applicable laws.

Mandatory Notices

We will consider for employment qualified applicants with arrest and conviction records in accordance with fair chance laws.

We provide market-competitive compensation packages, inclusive of base pay, incentives, benefits, and equity. It would not be typical for someone to be hired at the top end of range for the role, as actual pay will be determined based on several factors, including experience, skills, and qualifications. The target salary ranges are listed.