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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