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Job Vacancy At American Express As Attorney, For JD Graduates

Posted on: 1 Jul 2020 134 views
: Director & IP Counsel, Patent Attorney
: American Express
: https://www.americanexpress.com/
: New York, New York, United States
: JD
: 6

Job Description

The General Counsel’s Organization of American Express is seeking a hard-working, highly motivated, and creative patent attorney with litigation, licensing, and prosecution experience.  The attorney will join the Intellectual Property Law and Strategy (IPLS) practice group as Director & IP Counsel.  IPLS has global responsibility for American Express’s intellectual property portfolio and it seeks to complement and advance the company’s business objectives through competitive positioning and risk mitigation.

The attorney in this position will work with clients across multiple functional areas to strategically protect and advance the company’s intellectual property interests.  The work will include evaluating intellectual property assertions, managing patent preparation and prosecution, reviewing and negotiating licenses and IP-related transactions, performing intellectual property due diligence to support M&A, client counseling on IP issues, and rendering legal opinions with respect to patentability, validity and freedom to operate.

Job responsibilities:

  • Contributing to global IP strategy
  • Managing intellectual property risk, including evaluating intellectual property assertions, supporting intellectual property litigation and defense claims, overseeing freedom-to-operate analyses, product clearance searches, and rendering opinions with respect to patent infringement and validity
  • Building the company’s patent portfolio through oversight of patent preparation and prosecution
  • Managing patent applications throughout the patent lifecycle by working directly with the inventor community and outside patent prosecution counsel to ensure high quality patent applications for strategically important inventions
  • Collaborating on the invention disclosure review process to help ensure that the best inventions are identified and patented
  • Collaborating with business and technical teams in invention mining sessions
  • Conducting and synthesizing patent landscape studies
  • Facilitating trade secret analyses
  • Partnering with management and colleagues to develop, implement and execute policies and practices that drive a proactive, business-oriented intellectual property program
  • Providing clear, actionable and business-savvy intellectual property advice to business clients engaged in product development and innovation
  • Educating clients on important intellectual property issues and forging strong client relationships that leverage opportunities to identify, create and protect valuable intellectual property
  • Supporting intellectual property due diligence on strategic transactions
  • Reviewing and negotiating licenses and IP-related transactions
  • Reviewing, drafting and negotiating intellectual property agreements and IP provisions in large transactions
  • Offering thought leadership for cross-subject matter practice group issues and projects
  • Monitor intellectual property legal developments for issues that could impact the company’s business

Minimum Qualifications

  • 6+ years of relevant patent attorney experience
  • Patent litigation and licensing experience
  • Patent preparation and prosecution skills
  • Experience with managing patent portfolios, including foreign patent prosecution
  • Comprehensive understanding of intellectual property case law, rules and regulations
  • Influencing and negotiating abilities
  • Analytical and intellectual capabilities
  • Interpersonal skills and ability to work as part of a highly collaborative team
  • Ability to communicate complex issues effectively, both verbally and in writing
  • Ability to prioritize, manage multiple projects and meet deadlines
  • Possesses the following competencies: self-starter, intellectually curious, highly motivated, learning agility, growth mindset, attention to detail, problem-solving skills, well organized and resourceful, strong professional drive
  • Demonstrated experience in gaining credibility, managing expectations, and developing strong working relationships with legal colleagues and clients
  • Experience with open source-related matters, intellectual property ramifications of big data, and/or copyright is a plus
  • B.S. degree and/or advanced degree in Electrical Engineering, Computer Engineering, or Computer Science, and/or substantial and verifiable work experience in computer hardware and software arts  
  • J.D. and admission in good standing to a State Bar
  • Admission to practice before the USPTO
  • Proficient in using the full suite of Microsoft Office programs

Additional Details:

  • Location: 200 Vesey St, New York, NY 10080
  • Travel: Potentially 5-15%; domestic and international

General Counsel’s Organization:

Where great legal minds influence global business strategy.

Our mission is to protect and strengthen American Express through legal expertise and strategic advice that helps our business partners manage risk, identify opportunities, and deliver on the company’s promise of exceptional products and services. Given the dynamic nature of the global payments industry and the valued partnership between our team and the business, we see it as imperative to attract and develop talented people by:

  • Providing rich work experiences and opportunities for professional development
  • Recognizing and rewarding those who drive and deliver results
  • Respecting and valuing diversity, integrity, and personal accountability

American Express:

Delivering extraordinary experiences to its customers and employees every day.

American Express has been making a difference in people’s lives for over 160 years, backing them in moments big and small, granting access, tools, and resources to take on their biggest challenges and reap the greatest rewards.

We’ve also made a difference in the lives of our people, providing a culture of learning and collaboration, and helping them with what they need to succeed and thrive. We have their backs as they grow their skills, conquer new challenges, or even take time to spend with their family or community. And when they’re ready to take on a new career path, we’re right there with them, giving them the guidance and momentum into the best future they envision.

Because we believe that the best way to back our customers is to back our people.

The powerful backing of American Express.
Don’t make a difference without it.
Don’t live life without it.

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