Description
The General Counsel’s Organization of American Express is seeking an experienced, highly motivated, creative, and intellectually curious attorney with patent litigation experience. The attorney will join the Intellectual Property Law and Strategy (IPLS) practice group as Director and Counsel and report to the Chief IP Counsel. The position is based out of New York, NY, Washington, DC, Atlanta, GA, or Sunrise, FL.
The work will primarily include managing patent litigation, evaluating patent assertions, rendering legal opinions with respect to patentability, validity and freedom to operate, supporting IP and related transactions by reviewing, revising and negotiating agreements and conducting due diligence, client counseling on IP issues relating to software and hardware (including copyrights), advising on IP developments, and assisting with global IP strategy.
IPLS has global responsibility for American Express’s intellectual property portfolio and it seeks to complement and advance the company’s business objectives through brand protection, competitive positioning, and risk mitigation.
Job responsibilities include:
Managing intellectual property risk, including patent litigation, evaluating intellectual property assertions, overseeing freedom-to-operate analyses, product clearance searches, and rendering opinions with respect to patent infringement and validity
Reviewing, drafting, and negotiating intellectual property agreements and IP provisions in transactions
Supporting IP due diligence in M&A transactions, venture investments, and IP acquisitions
Partnering with management and colleagues to develop, implement and execute policies and practices that drive a proactive, business-oriented intellectual property program
Educating clients on important intellectual property issues and forging strong client relationships
Contributing to global IP protection and management strategies, including the development of the company’s patent portfolio
Monitoring intellectual property legal developments and interfacing with government relations related to IP issues that could impact the company’s business
Conducting and synthesizing patent landscape studies
Offering thought leadership for cross-subject matter practice group issues and projects
Qualifications
7 years of patent litigation experience (outside counsel and/or inhouse)
J.D. and admission in good standing to a state bar
B.S. degree and/or advanced degree in Electrical Engineering, Computer Engineering, Computer Science, Mathematics and/or substantial and verifiable work experience in computer hardware and software arts
Understanding of patent laws, rules and procedures to develop, advise, and counsel clients on protection, risk avoidance, and enforcement strategies
Exhibits intellectual curiosity
Ability to work well in an international organization while providing pragmatic and business-oriented advice
Relationship building, collaborative, and negotiation abilities
Ability to communicate complex issues effectively, both verbally and in writing; fits message to audience
Ability to prioritize and handle shifting priorities; manage multiple projects and meet deadlines
Strong professional drive, self-directed, and highly motivated with a growth mindset
Demonstrated attention to detail, problem-solving ability, and strong organizational and time management skills
Proficient in using the full suite of Microsoft Office programs
Preferred Qualifications
Hands-on transactional experience handling complex intellectual property issues, including IP license agreements
Experience with open source-related matters
Inhouse experience
Understanding of copyright and trade secret laws, rules and procedures to develop, advise, and counsel clients on protection, risk avoidance, and enforcement strategies
Admission to practice before the USPTO
Patent preparation and prosecution skills
Experience with managing patent portfolios, including foreign patent prosecution
Experience with providing counsel, support, and training to domestic and international colleagues regarding intellectual property matters, such as meeting with business clients engaged in product development and innovation
American Express is an equal opportunity employer and makes employment decisions without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, veteran status, disability status, age, or any other status protected by law.
We back our colleagues with the support they need to thrive, professionally and personally. That’s why we have Amex Flex, our enterprise working model that provides greater flexibility to colleagues while ensuring we preserve the important aspects of our unique in-person culture. Depending on role and business needs, colleagues will either work onsite, in a hybrid model (combination of in-office and virtual days) or fully virtually.
If the role you are applying for is designated as hybrid or onsite, you will be required to demonstrate that you have completed your primary COVID-19 vaccination series (i.e. 2 doses for Moderna/Pfizer and 1 dose for J&J) and, for medically eligible
colleagues, a booster shot, in order to work in or visit any of our offices. This requirement is subject to legally required accommodations.
Booster eligibility: The CDC has established guidelines for when adults are eligible to receive booster shots depending on when they completed their initial vaccine series (currently five months after the Pfizer-BioNTech and Moderna vaccines, and two months after the J&J Vaccine). If you have completed your primary vaccine series but have not yet reached your booster eligibility date, you will be able to come into the office; however, you will need to complete your booster within 30 days of becoming eligible to continue coming in and participating in company-sponsored in-person events.
US Job Seekers/Employees – Click here to view the “ EEO is the Law ” poster and supplement and the Pay Transparency Policy Statement .
If the links do not work, please copy and paste the following URLs in a new browser window: https://www.dol.gov/agencies/ofccp/posters to access the three posters.
Canada Only:
American Express is committed to providing an inclusive and accessible work environment in which all people who apply for positions or who work for or on behalf of Amex are treated with dignity and respect and are provided with equal treatment with respect to employment, regardless of that person’s age, sex, sexual orientation, gender identity, gender expression, race, colour, ancestry, ethnic or national origin, citizenship, religion or creed, marital status, family status, pregnancy, disability, record of offences, social condition or origin, political beliefs, association or activity or other factors prohibited under applicable Human Rights legislation (the “Prohibited Grounds”). If you have a disability and need accommodation, please speak with the Recruiter for more information.
In order to work in or visit any of our offices in Canada we require colleagues to be fully vaccinated against COVID-19.
Offer of employment with American Express is conditioned upon the successful completion of a background verification check, subject to applicable laws and regulations.
Job: Legal
Primary Location: United States
Schedule Full-time
Req ID: 22005153
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