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Associate General Counsel, Intellectual Property

Company: Torc Robotics
Location: blacksburg
Posted on: May 3, 2021

Job Description:

At Torc, we have always believed that autonomous vehicle technology will transform how we travel, ship goods, and do business. A leader in autonomous driving since 2007, Torc has spent over a decade commercializing their autonomous solutions with experienced partners. Now a part of the Daimler family , we are developing automated trucks to transform transportation. Join us and take your career to new heights with a company that helped pioneer autonomous technology. You'll work with an experienced team of people who are committed to creating safer roads, and your contributions will have an impact on the future of transportation. About the Role: As an Associate General Counsel on the Torc legal team you will work closely with executive and technical leadership and other business functions at Torc to define and implement an IP strategy, protect intellectual property rights, and provide legal advice to management and staff on all aspects of global intellectual property, including inventions, patents, copyrights and trademarks, and licensing. Responsibilities: Establish and actively manage an IP portfolio with an appropriate base of patent assets including determining strategic areas for patenting, conducting patent harvest sessions, managing invention disclosures, identifying patentable subject matter, managing outside patent counsel to ensure quality and timely work, and maximizing value of the property. Collaborate with engineering, product, and strategy teams to shape IP strategy and collaborate across business units to identify and seize high value innovation. Analyze and mitigate risks in view of business goals and objectives, third-party IP and trends, legal updates, and/or other environmental factors, and apply sound tactical approaches to solutions to maintain our investments values and move the business forward. Serve as advisor and provide guidance and education to researchers, engineers and business teams on IP issues and provide counsel on IP terms in commercial and corporate matters. Manage responses to IP related communications, working cross-functionally across the legal and business teams, including potentially evaluating acquisition and licensing opportunities. Interpret the rules and regulations of the patent process, negotiate contracts, file documents, and provide legal representation to inventors. Develop and maintain policies and procedures related to IP. Research and prepare documentation on nondisclosure agreements and provide negotiation and legal services as needed. Efficiently file and maintain any financial and business paperwork for documentation and payment requirements. Draft, file, and prosecute patent applications and specifications on behalf of inventors before the U.S. Patent and Trademark Office (USPTO) to establish and protect patent rights, writing in full detail using exact legal terms and with a sense of urgency. Draft, file, and prosecute copyright and trademark applications. Answer any questions and apply information needed that examiners might have about applications. Monitor deadlines for patent and trademark renewals and fees in a timely manner. Advise on the transfer or sale of IP rights. Conduct searches, advise on potential patent infringement, and ensure that the property has not been previously represented in the public domain and is patentable. Cost-effectively manage high quality patent prosecution work by outside counsel in the US and abroad. Prepare for and participate in legal proceedings, including research and preparation of arguments, for successful outcomes. Qualifications: Juris Doctorate Degree from an accredited university with a strong academic record with a BS/MS in Engineering, Computer Science, or related field of study. State bar membership with good standing. Registration to practice before the U.S. Patent and Trademark Office. 8+ years of relevant legal experience preparing and prosecuting domestic and international patent applications, and providing patent ability, validity, and infringement assessments, licensing, and litigation with a law firm, federal agency, or corporation. Experience with global patent prosecution, patent appeals, re-examination, re-issue, inter partes reviews proceedings. Experience drafting license agreements, development agreements, and nondisclosure agreements. Experience identifying patentable technologies, patent analysis, open source compliance and software development process. Solid technical background/understanding of autonomous vehicle related hardware, including sensor technologies, and software related to AI. Excellent interpersonal, verbal, and written communication skills to build trust and strong working relationships, effectively create and proofread documents and reports, and communicate to a diverse workforce. Keen attention to detail to identify problems and processes. Critical/logical thinking to identify problems and provide solutions to ensure efficiency, safety, and quality. Strong business insight and judgment, team orientation, and collaborative style Strong time management and organizational skills to plan, develop, coordinate resources, prioritize effectively, and maintain competing demands simultaneously with frequent interruptions and in a fast-paced environment. Ability to ethically handle sensitive and confidential information with impartiality and professionalism. Perks of Being a TORC'r Torc cares about our team members and we strive to provide benefits and resources to support their health, work/life balance, and their future. Additionally, we are always open to suggestions to accommodate individual employee needs. Torc offers: Full coverage of monthly medical premiums for full-time employees Medical/dental/vision/ AD+D and Life Insurance 401K plan with employer matching Annual learning and development stipend Leadership development training Collaborative, energetic, and team-focused work environment Flexibility in schedule and generous paid vacation

Keywords: Torc Robotics, Blacksburg , Associate General Counsel, Intellectual Property, Other , blacksburg, Virginia

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