Description:

An American Auto Insurance Company seeks an intellectual property (IP) lawyer to join its in-house Legal department. Your focus will be on supporting the development of An American Auto Insurance Company's patent portfolio; you will also support the valuable An American Auto Insurance Company brand, support our engineers with respect to open source, advise the company on IP strategy, and be responsible for diverse IP issues as needs arise.

It is an exciting time to be at An American Auto Insurance Company. An American Auto Insurance Company has been building world-class engineering and product organizations, and is rapidly advancing its strategies with respect to user experience (UX) / user interfaces (UI), artificial intelligence (AI), and other technology areas. This role will provide you an opportunity to have a big impact in support of An American Auto Insurance CompanyO's increased focus on innovation.

You will be a member of An American Auto Insurance Company's IP team, which is a part of An American Auto Insurance Company's technology law organization that is responsible for privacy, cybersecurity, AI, and IP.

Expected key responsibilities (and we encourage you to apply even if you do not have experience in all of these areas, as we are interested in candidates who demonstrate a strong capacity for learning and development):
  • Conducting invention harvesting sessions, making patent filing decisions, and managing outside patent counsel for effective patent application drafting and prosecution.
  • Delivering IP trainings to software engineering, UX/UI design, product, and business teams.
  • Developing strategies for managing risk with respect to third party IP and managing IP disputes.
  • Managing outside trademark counsel for effective filing and prosecution of trademark applications and renewal of trademark registrations.
  • Engaging in IP enforcement efforts, including addressing unauthorized online uses of An American Auto Insurance Company's trademarks.
  • Supporting An American Auto Insurance Company engineering with respect to open source licensing and open source community participation.
  • Developing and enhancing IP-related corporate policies.
  • Advising the company on IP issues.

Required Qualifications:
  • J.D. or LL.M. degree from an accredited law school, active license to practice law in a U.S. jurisdiction, and registration as patent attorney with the U.S. Patent & Trademark Office.
  • Undergraduate degree in computer science, computer engineering, or electrical engineering, or significant professional experience with software.
  • At least five years of experience practicing intellectual property law, with significant experience drafting and prosecuting patent applications.
  • Deep understanding of patent law, in particular patent eligibility (35 USC 101), as applied to software.
  • Interest in learning and growing professionally, and willingness take on projects and responsibilities in new (to you) areas.
  • Ability to work autonomously, but also interest in cultivating collaborative working relationships with colleagues in the Legal department and internal clients.

Preferred Qualifications:
  • In-house legal experience.
  • Professional experience in a technical field, e.g., as a software engineer.
  • Experience with open source software, design patents, trademark practice, UDRP actions and online brand enforcement, patent freedom to operate studies, IP litigation, IP licensing, and IP support for commercial transactions.
  • Position is Hybrid in office three days a week