BD (Becton, Dickinson and Company) Counsel in Tempe, Arizona

Job ID: 2018-11694

Career Level: management

Relocation: No

Location: Tempe,Arizona,United States


Becton, Dickinson Interventional (BDI) is a leading multinational developer, manufacturer and marketer of innovative, life-enhancing medical technologies in the fields of vascular, urology, oncology and surgical specialty products, employing over 65,000 people across 50 countries around the world. Founded more than 100 years ago, BDI pioneered many devices that are cornerstones of modern healthcare. BD - PI is the vascular division within BDI and focusses on interventional products for peripheral arterial disease (PAD), end stage renal disease (ESRD), and Cancer.

We expect the highest levels of quality, integrity, service, and innovation from our employees – on the job and in the communities in which we work and live. In return, we foster an environment where individuals are treated with fairness, respect, and feel valued, acknowledged and rewarded.

Be Your Best at BD-PI – and ultimately, you can have an impact on the lives of people around the world.


Summary of Position with General Responsibilities:

Becton, Dickinson & Company is seeking a patent attorney with 5-10 years legal experience to be located at its Peripheral Intervention business unit in Tempe, AZ. The general responsibilities include managing the IP work including patent preparation and prosecution, freedom to operate analysis and diligence. This position reports to the Associate General Counsel, IP and is a dedicated, full-time position to support a leading medical device company’s growing global IP practice. The successful candidate must be able to work independently, develop and maintain strong relationships with the business and R&D communities.

Essential job Functions:

The following duties and responsibilities are intended to be representative of the work performed by the incumbent in this position and are not all-inclusive. The omission of a specific duty or responsibility will not preclude it from the position.

  • Identification and management of IP assets and protection of inventions, trade secrets, and related IP matters. Educate and advise BD associates on intellectual property issues.

  • Work with engineers and scientists in R&D to identify patentable or otherwise protectable IP assets; obtain disclosure of inventions for preparation of patent applications in the U.S. and abroad.

  • Manage patent prosecution worldwide, including providing direction to outside counsel globally.

  • Conduct and evaluate prior art searches, monitor third party patent activity in areas of interest and manage offensive and defensive patent challenges in global patent offices.

  • Work closely with outside counsel in the assessment of product designs for infringement studies as well as non-infringement/invalidity and clearance opinions in support of R&D programs and M&A activities.

  • Assist with the development and implementation of patent strategies including analysis of BD and competitors’ patent portfolios. Assist, as appropriate, with management of IP litigation. Assist, as appropriate, with IP elements of agreements.

  • Additional areas of responsibility as assigned based upon business and IP Law Group needs.

Basic Qualifications:

  • Bachelor’s or higher in engineering or science, preferably in mechanical or biomedical

  • Juris Doctor from an ABA accredited law school

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

  • Member of at least one U.S. state bar

  • At least 5 years legal experience with patent preparation and prosecution

  • Excellent oral and written communication skills

  • Ability to work with minimal supervision

  • Superior organizational skills are essential

Additional Desirable Qualifications Skills and Knowledge:

  • Team player who is able to interact collegially with outside counsel, other members or the law department and company personal at all levels of the organization.

  • Must be able to communicate complex IP concepts and issues to lay management clearly and effectively, using well-organized and systematic presentation styles.

  • Strong Drafting and negotiation skills; licensing and litigation background a plus.

  • Experience with global patent filing strategies and with US and European post-grant patent office proceedings.

  • Experience with Anaqua patent docketing system a plus.

  • In-house experience, preferably in medical device industry a plus.

Education and/or Experience:

Patent attorney with engineering background, preferably in mechanical or biomedical, and one to five years patent prosecution experience in a law firm or in-house legal counsel.

Physical Demands:

While performing the duties of this job, the associate is regularly required to stand, walk, sit and use hands to manipulate, handle or feel objects, tools, controls and office equipment. The associate frequently is required to talk and hear. The associate is occasionally required to reach with hands and arms and stoop, kneel or crouch.

Work Environment:

While performing the duties of this job, the associate may be in an open cubicle environment. Candidate must be able to work in a team-oriented, fast-paced environment. Becton, Dickinson and Company is an affirmative action, equal opportunity employer that values and actively seeks diversity in the workforce.

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