Senior IP Counsel

Motional•Boston, MA

14d•Hybrid

About The Position

Motional’s global headquarters are located at 100 Northern Avenue in Boston, MA. Nestled in the bustling Seaport district with sweeping views of Boston Harbor and downtown Boston, the office is located close to major transit lines and a quick walk to various restaurants and popular attractions. This role is hybrid from our Boston office. It requires two in-office days each week, ideally Tuesday and Thursday. Mission Summary: We are seeking a talented Senior IP Counsel with experience in preparing and prosecuting patent applications to maintain and enhance our IP portfolio.

Requirements

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

Nice To Haves

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

Responsibilities

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