We are seeking a talented Senior IP Counsel with experience in preparing and prosecuting patent applications to maintain and enhance our IP portfolio.
Manage the preparation and prosecution of patent applications from ideation to filing
Lead patent harvesting, brainstorming, and IP training sessions across different sites
Review outside counsel work product including draft patent applications and draft office action responses
Advice on legal issues related to managing Motional’s brand and trademarks portfolio, trade secrets protection, open-source software licenses, and data licensing among others
Degree in Computer Science, Computer or Software Engineering, Electrical Engineering, Automotive Engineering or other relevant technical discipline
At least 7 years of US patent prosecution experience
Proven track record of drafting and prosecuting patent applications
USPTO registration
Member of at least one State bar in the US
Strong ability to write concisely and clearly
Strong communication skills
Ability to collaborate effectively with both engineers and outside counsel
Willingness to work across time zones
Comfortable with a minimum of 10% travel (domestic and international) per year
Master’s or higher qualification in Computer Science, Computer or Software Engineering, Electrical Engineering, Automotive Engineering, or other relevant technical discipline
At least 2 years of in-house experience as an IP or Patent Counsel with a technology company
Foreign prosecution experience (European, Chinese, or Korean experience preferred)
Experience drafting applications related to machine learning, robotics, automotive technologies
Experience with trademark prosecution, open-source software licenses, software licensing