BD (Becton, Dickinson and Company) Senior Counsel - Intellectual Property in San Diego, California

Job Description SummaryBD is seeking a patent attorney with 6-9 years of legal experience, preferably including in-house experience, to be located in San Diego, California supporting its Medication Management Solutions (MMS) business. This position will be responsible for managing IP work including patent preparation/prosecution, freedom to operate analysis and diligence. The position reports to an Associate General Counsel – Intellectual Property also located in San Diego. The successful candidate must be able to work independently, and develop and maintain strong relationships with MMS project teams and the R&D group.

Job Description

  • Maintain strong interactions with R&D and project teams, to identify patentable inventions and create and execute patenting strategies

  • Engage with MMS management to provide strategic counseling, updates and recommendations related to the MMS IP portfolio and offensive/defensive patent activities

  • Provide direction to outside counsel on patent filing and prosecution matters globally

  • Provide landscape analyses and related support for R&D programs

  • Provide patentability, FTO and related opinions in support of R&D programs and business development activities

  • Monitor third party patent activity in areas of interest

  • Assist in offensive and defensive patent challenges in global patent offices

  • Assist commercial attorneys with IP elements of agreements

  • Assist in management of IP litigation involving MMS

  • Educate and advise MMS associates on intellectual property issues

  • As a member of BD’s IP group, manage and/or participate in projects impacting the IP group as a whole

* Additional areas of responsibility as assigned.

Requirements

  • Bachelor’s or higher in engineering or science, preferably in Computer Science, Computer Engineering, Mechanical Engineering, Electrical Engineering, or Systems Engineering

  • Juris Doctor from an ABA accredited law school

  • Admitted to practice before the U.S. Patent and Trademark Office

  • Member of the California bar (or ability to become RIHC)

  • 6-9 years of law firm and/or in-house experience is required

  • Experience with and demonstrated competency in the computer or electromechanical arts and technology systems (e.g. systems including software)

  • Experience with US and European post-grant patent office proceedings

  • Experience with global patent filing strategies

  • Experience with data and data analytics is preferred

  • Strong oral and written communication skills

  • Strong interpersonal skills

  • Strong analytical thinking and attention to detail

  • Strong organizational skills, including ability to manage and drive projects

  • Strong business acumen including the ability to integrate legal and business risks and considerations

  • Cost conscious, proactively manages matter budgets, and will drive strategies to minimize outside counsel spend without sacrificing quality of work product

Primary Work LocationUSA CA - San Diego Bldg A&B

Additional Locations

Work Shift

Becton, Dickinson and Company is an Equal Opportunity/Affirmative Action Employer. We do not unlawfully discriminate on the basis of race, color, religion, age, sex, creed, national origin, ancestry, citizenship status, marital or domestic or civil union status, familial status, affectional or sexual orientation, gender identity or expression, genetics, disability, military eligibility or veteran status