Associate General Counsel

Job Responsibilities:

• ​​Lead and manage the North American IP & Patents team (patent professionals (including patent engineers and patent attorneys), paralegals, and administrative assistants).
• Select, interview, hire, and train new IP team members.
• Assess the patentability of harvested inventions and evaluate the achievable scope of IP protection, taking into account the company IP strategy.
• Assist business unit managers/project leaders in implementing the company IP strategy
• Monitor and evaluate third-party IP rights for relevance to the company, and assess and advise on potential defensive measures.
• Pursue avenues of IP portfolio licensing by conducting thorough infringement analyses and coordinating licensing efforts with the global IP team.
• Examine the legal status of domestic and foreign IP rights, in cooperation with external or foreign attorneys if necessary, especially in cases of suspected issues involving third-party IP rights.
• Manage outside IP counsel’s patent application drafting and filing activities, and analysis of third party IP rights.
• Keep the company updated on IP policy, legislation, and case law.
• Advise North American Mercedes-Benz legal departments on questions of IP law and strategy and liaise between North American and foreign IP prosecution/litigation offices.  
• Support contract negotiations with third-party technology collaborators, advising on issues relating to, e.g., IP ownership.
• Coordinate with other companies, universities, trade groups, and consortiums on IP and technology policy matters.  
• Develop and provide IP training for cross-functional teams throughout the company. 
  
• Implement and improve company inventor incentive programs. 
  
• Work closely with company IP colleagues in North America and abroad. 
  
• Manage US-based patent prosecution activity for globally developed innovation at Mercedes-Benz, including developing and maintaining outside counsel relationships and ensuring robust IP protection for new product offerings.
• Identify potential IP licensing targets and facilitate third-party outreach and licensing negotiations in North America.
• Develop and execute best practices for all company IP creation originating in or entering the U.S.
• Actively participate in the Mercedes-Benz IP leadership team and IP risk board to support global decision-making regarding company-wide IP rights, strategy, budgeting, and staffing.
• Coordinate with the company’s U.S. External Affairs team on IP and technology policy matters, including proposed legislation, trade group policies and congressional communication, and CAFC/SCOTUS amicus briefs.
• Support IP litigation and Inter Partes Reviews involving the company.
• Act as the North American point of contact for all Standard Essential Patent (SEP) issues including incorporation of standards into vehicle systems and algorithms, potential litigation, and licensing activity including patent pools and networks.   
• *Position Title and Level will be commensurate with professional background and experience.​ 

Minimum Qualifications:

• ​​BS – electrical engineering, mechanical engineering, computer science, physics, or other science degree  
• JD – Law Degree
• ​​10-12 years prior experience as an IP attorney at a law firm, in-house, or both​  Experience with patent portfolio management​ 
• Other licenses or certifications required:
• Licensed attorney in a US state
• Attorney registered to practice before the USPTO 

Preferred Qualifications:

• Automotive, software industry IP experience