Lead Counsel - Patent & Trade Secrets at McKesson (Atlanta, GA)

| Atlanta, GA
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McKesson requires new employees to be fully vaccinated for COVID-19 as defined by the CDC, subject to applicable, verified accommodation requests.

Lead Counsel - Patent & Trade Secrets

McKesson's well-regarded legal department is seeking an experienced patent lawyer to provide decisive day-to-day legal counseling and advice across the enterprise. This Lead Counsel will play a key role in McKesson's portfolio-building and risk mitigation strategies for patents, trade secrets, and other Intellectual Property (IP) in collaboration with other IP professionals, Business Unit Attorneys, Business Unit strategists, Corporate and Business Unit Technology teams, and other key internal stakeholders.

The successful candidate will:
  • Bring a depth of knowledge and experience in handling patent and related IP substantive work, from assessing initial proposals through patent application, portfolio and lifecycle management and commercialization activities.
  • Be comfortable in a fast-paced environment and successfully manage many projects simultaneously. This will also include collaborating with other IP professionals and portfolio managers.

Key Responsibilities:
  • Management of substantial utility and design patent portfolio that strategically accords with business needs and priorities, including identifying those ideas ripe for patent preparation, prosecution, maintenance, and/or defense through US (and sometimes foreign) patent filings, patent office administrative office actions, and/or other relevant courts.
  • Will apply knowledge of IP trends and case law developments to maximize IP strategies and advice for the business.
  • Management of outside counsel, outside vendors, and associated budgets in the day-to-day preparation and prosecution of patent applications.
  • Engagement and training of the inventor community on identifying patentable ideas and submitting invention disclosures to a prescribed patent program.

Minimum Requirements:
  • Minimum of 4+ years of experience practicing patent and other IP law, with law firm and/or in-house corporate experience.
  • Admission to practice before the U.S. Patent and Trademark Office.

Critical Skills:
  • Experience reviewing and evaluating patents/patent applications, ideally in the fields of software applications, healthcare applications, artificial intelligence, and platforms for software applications.
  • Clarity in rendering legal opinions with respect to patentability, validity, and freedom to operate.
  • Proven track record of handling contract review, drafting, negotiations, and other transactional work with regard to patent and other intellectual property and related transactional provisions for complex M&A, licensing, collaboration, and standard vendor/partner agreements.
  • Skilled in conducting M&A due diligence assessments, with streamlined communications and clear counseling to relevant business teams and stakeholders.
  • Experience assessing litigation threats and appropriately partnering with in-house and outside counsel litigation teams on enforcement activities to maximize outcomes for company while minimizing costs.
  • Understanding of, thirst for tackling, and ability to quickly learn (often self-teaching of) technical concepts and advanced knowledge of trends and issues applicable to existing, evolving, and new healthcare technology models.

Additional Knowledge & Skills:
  • Experience counseling business entities operating in the healthcare industry.
  • Proficiency in advising senior management, up to and including executive-level management, on significant IP legal risks and/or equity strategies.
  • Ability to provide clear and actionable training to a variety of internal stakeholders centered on intellectual property identification and protection.
  • Be a trusted counselor and partner to the business in navigating complex and continually evolving business and legal landscapes.
  • Possess excellent legal judgment with the ability to be both pragmatic/business-oriented and strategic and the communication skills to deliver relevant and actionable IP guidance across all levels of the organization.
  • Efficiency in working independently and/or collaboratively, with a record of developing strong working relationships across a diverse client base and with other IP professionals.
  • Ability to lead at all levels across an organization.
  • Skilled at integrating data points from across the company and disparate projects to provide strategic and cost-effective guidance that marries business objective with legal requirement and equity-building strategies.
  • Expertise in trademark law, data governance law, privacy, and/or cybersecurity issues a significant plus.

  • Ideally possess Bachelor of Science degree in computer science, biostatistics, electrical engineering, mathematics/statistics, or other engineering domains.
  • A Juris Doctor degree with excellent academic credentials and member of a state bar in good standing.

Physical Requirements:
  • General Office Demands

McKesson is an Equal Opportunity/Affirmative Action employer.

All qualified applicants will receive consideration for employment without regard to race, color, religion, creed, sex, sexual orientation, gender identity, national origin, disability, or protected Veteran status.Qualified applicants will not be disqualified from consideration for employment based upon criminal history.

McKesson is committed to being an Equal Employment Opportunity Employer and offers opportunities to all job seekers including job seekers with disabilities. If you need a reasonable accommodation to assist with your job search or application for employment, please contact us by sending an email to [email protected] . Resumes or CVs submitted to this email box will not be accepted.

Current employees must apply through the internal career site.

Join us at McKesson!
More Information on McKesson
McKesson operates in the Healthtech industry. The company is located in Irving, TX, Columbus, OH and Richmond, VA. It has 23630 total employees. It offers perks and benefits such as Flexible Spending Account (FSA), Disability insurance, Dental insurance, Vision insurance, Health insurance and Life insurance. To see all jobs at McKesson, click here.
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