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Counsel - IP

Posted Nov 19
Full Time
Atlanta, Georgia

McKesson is an impact-driven, Fortune 10 company that touches virtually every aspect of healthcare. We are known for delivering insights, products, and services that make quality care more accessible and affordable. Here, we focus on the health, happiness, and well-being of you and those we serve – we care. What you do at McKesson matters. We foster a culture where you can grow, make an impact, and are empowered to bring new ideas. Together, we thrive as we shape the future of health for patients, our communities, and our people. If you want to be part of tomorrow’s health today, we want to hear from you.

Counsel - IP

Location: Atlanta, GA or Dallas, TX (Required)

Experience: 3+ years

Hybrid Role

Key Responsibilities :

  • Provide clear and actionable legal advice to a variety of stakeholders across the enterprise on a wide range of IP matters, with focus on patents but also including trade secrets, trademarks, copyrights, and right of publicity.
  • Support the development, management, and enforcement of a portfolio of patent assets in accord with business goals.
  • Perform and analyze patent landscape, clearance, and patentability searches and render legal opinions with respect to patentability, freedom to operate and patent validity.
  • Develop and maintain an in-depth understanding of McKesson’s existing and planned innovation programs, technologies and business activities as well as the relevant external IP landscape, including conducting analyses of competitor products and IP portfolios.
  • Manage invention disclosure, inventor compensation and patent renewal processes.
  • Assist in drafting and negotiating a variety of marketing related releases and agreements.
  • Assist with Internet, social media, and domain name consulting.
  • Manage outside counsel, outside vendors and associated budgets in relation to assigned IP matters.
  • Apply knowledge of IP trends and case law to develop and improve IP strategies and processes.
  • Engage and train internal client groups on IP awareness, capture, protection and enforcement.
  • Assist with drafting and negotiation of IP terms of licensing, collaboration and other vendor agreements.
  • Assist on enforcement matters including platform/Intermediary liability and DMCA takedowns.

Minimum Requirements :

  • 3 years of experience practicing IP law within a multidisciplinary IP practice group or team with focus on patent law, including patent prosecution, with a large law firm and/or in-house
  • Admission to practice before the U.S. Patent and Trademark Office

Critical Skills :

  • Experience preparing, prosecuting, reviewing and evaluating patents and patent applications in the fields of software applications, healthcare applications, and artificial intelligence
  • Experience in rendering legal opinions with respect to patentability, validity and freedom to operate
  • Experience supporting trade secrets, trademark, copyright, right of publicity, and brand protection and anti-counterfeiting matters.
  • Experience drafting, revising, and negotiating contracts and conducting other transactional work related to intellectual property, including M&A, licensing, co-development and standard vendor/partner agreements
  • Experience assessing litigation threats and appropriately partnering with in-house and outside counsel litigation teams on enforcement activities to maximize outcome for the company while minimizing costs
  • Understanding and ability to quickly learn technical concepts, including trends and issues applicable to existing, evolving and new healthcare technology models.

Additional Knowledge & Skills :

  • Provide guidance on open-source-related licensing, usage, compliance and risks.
  • 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.
  • Efficient when working independently and/or collaboratively.

Education :

  • Preferably possesses a Bachelor of Science or Bachelor of Engineering degree in computer science, electrical engineering, computer engineering, or other engineering domains.
  • A Juris Doctor degree with excellent academic credentials and a member of a state bar in good standing.

Must be authorized to work in the US. Sponsorship is not available for this position.

At McKesson, we care about the well-being of the patients and communities we serve, and that starts with caring for our people. That’s why we have a Total Rewards package that includes comprehensive benefits to support physical, mental, and financial well-being. Our Total Rewards offerings serve the different needs of our diverse employee population and ensure they are the healthiest versions of themselves. For more information regarding benefits at McKesson, please click here.

As part of Total Rewards, we are proud to offer a competitive compensation package at McKesson. This is determined by several factors, including performance, experience and skills, equity, regular job market evaluations, and geographical markets. In addition to base pay, other compensation, such as an annual bonus or long-term incentive opportunities may be offered.

Our Base Pay Range for this position

$96,800 - $161,300

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 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!