Associate General Counsel, IP

Mercedes-Benz Research & Development North America•Atlanta, CA
•Onsite

About The Position

The Associate General Counsel, IP oversees intellectual property protection, prosecution, and strategic activity for Mercedes-Benz IP operations in North America. This is an on-site position based in San Jose, California; Atlanta, Georgia; or Ann Arbor, Michigan, and may require occasional travel for team meetings and business needs. Position title and level will be commensurate with professional background and experience. The role leads the North American IP and Patents team, manages U.S.-based patent prosecution for globally developed Mercedes-Benz innovation, advises North American legal departments and business teams on IP law and strategy, and supports global IP decision-making. It also addresses third-party IP rights, licensing, contracts, policy matters, IP litigation, Inter Partes Reviews, and Standard Essential Patent issues. Visa sponsorship is not available. The position may involve access to export-controlled technology, hardware, software, or technical data, and may require an export license or authorization under U.S. law.

Requirements

  • Bachelor’s degree in electrical engineering, mechanical engineering, computer science, physics, or another science field.
  • Juris Doctor (JD) law degree.
  • 10–12 years of prior experience as an IP attorney at a law firm, in-house, or both.
  • Experience with patent portfolio management.
  • Licensed attorney in a U.S. state.
  • Registered to practice before the USPTO.

Nice To Haves

  • Automotive or software industry IP experience.

Responsibilities

  • Lead and manage the North American IP and Patents team, including patent professionals, paralegals, and administrative assistants.
  • Select, interview, hire, and train new IP team members.
  • Assess harvested inventions for patentability and evaluate the achievable scope of IP protection in light of company strategy.
  • Assist business unit managers and project leaders with implementing the company IP strategy.
  • Monitor and evaluate third-party IP rights for relevance and advise on potential defensive measures.
  • Conduct infringement analyses and coordinate licensing efforts with the global IP team.
  • Examine the legal status of domestic and foreign IP rights, working with external or foreign attorneys when needed, especially where third-party IP issues are suspected.
  • Manage outside 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 IP law and strategy and liaise with North American and foreign IP prosecution and litigation offices.
  • Support contract negotiations with third-party technology collaborators, including advising on IP ownership.
  • Coordinate with companies, universities, trade groups, and consortiums on IP and technology policy matters.
  • Develop and provide IP training for cross-functional teams.
  • Implement and improve company inventor incentive programs.
  • Work closely with Mercedes-Benz IP colleagues in North America and abroad.
  • Manage U.S.-based patent prosecution for globally developed innovation, including 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 company IP creation originating in or entering the United States.
  • Participate in the Mercedes-Benz IP leadership team and IP risk board, supporting global decisions on IP rights, strategy, budgeting, and staffing.
  • Coordinate with the U.S. External Affairs team on IP and technology policy matters, including proposed legislation, trade group policies, congressional communication, and CAFC/SCOTUS amicus briefs.
  • Support IP litigation and Inter Partes Reviews involving the company.
  • Serve as the North American point of contact for Standard Essential Patent issues, including standards incorporated into vehicle systems and algorithms, potential litigation, and licensing activity such as patent pools and networks.

Benefits

  • Medical, dental, and vision insurance for employees and their families.
  • 401(k) with employer match.
  • Up to 15 company-paid holidays.
  • Paid time off, including flexible time off for salaried employees, sick time, and parental leave.
  • Tuition assistance program.
  • Wellness/fitness reimbursement programs.

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What This Job Offers

Job Type

Full-time

Career Level

Senior

Education Level

Ph.D. or professional degree

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