Director & Counsel - IP Risk Mitigation - IP Law & Strategy

American Express Sunrise , FL 33304

Posted 5 days ago

You Lead the Way. We've Got Your Back. At American Express, we know that with the right backing, people and businesses have the power to progress in incredible ways. Whether we're supporting our customers' financial confidence to move ahead, taking commerce to new heights, or encouraging people to explore the world, our colleagues are constantly redefining what's possible - and we're proud to back each other every step of the way. When you join #TeamAmex, you become part of a diverse community of over 60,000 colleagues, all with a common goal to deliver an exceptional customer experience every day.

Director and Counsel

  • IP Risk Mitigation

  • IP Law & Strategy

The General Counsel's Organization (GCO) of American Express is seeking an experienced, hardworking, highly motivated, and creative patent attorney with patent litigation experience. The attorney will join the Intellectual Property Law and Strategy (IPLS) practice group as Director and Counsel and report to a Vice President & Senior Counsel.

The work will primarily include strategies for addressing intellectual property (IP) risks, evaluating patent assertions, supporting management of patent litigation, rendering legal opinions with respect to patentability, validity and freedom to operate, client counseling on IP issues, conducting due diligence, supporting trade secret issues, supporting IP-related transactional issues (with particular emphasis on patents, trade secrets and software-related copyrights), advising on IP developments, assisting on IP policy initiatives, and assisting with global patent strategy.

IPLS has global responsibility for American Express's intellectual property portfolio and it seeks to complement and advance the company's business objectives through brand protection, competitive positioning, and risk mitigation.

Job Responsibilities

  • Assist in managing IP risk, including patent assertions and patent litigation, working on freedom-to-operate analyses, product clearance searches, and rendering opinions with respect to patent infringement and validity

  • Reviewing, drafting, and negotiating IP agreements and IP provisions in transactions

  • Supporting trade secret initiatives and advising on trade secret issues

  • Supporting IP due diligence in M&A transactions, venture investments, and IP acquisitions

  • Conducting and synthesizing patent landscape studies

  • Supporting IP policy initiatives

  • Partnering with colleagues to develop, implement and execute policies and practices that drive a proactive, business-oriented IP program

  • Educating clients on important IP issues and forging strong client relationships

  • Contributing to global IP protection and management strategies, as needed

  • Monitoring IP legal developments and interfacing with government relations related to IP issues that could impact the company's business, as needed

  • Offering thought leadership for cross-subject matter practice group issues and projects

Required Qualifications

  • J.D. and admission in good standing to a State Bar

  • Admission to practice before the USPTO

  • 4+ years of patent litigation experience (outside counsel and/or inhouse)

  • B.S. degree and/or advanced degree in Electrical Engineering, Computer Engineering, or Computer Science, and/or substantial work experience with computer hardware and software arts

  • Understanding of patent laws, rules and procedures to develop, advise, and counsel clients on protection, risk avoidance, and enforcement strategies

  • Exhibits intellectual curiosity

  • Ability to work well in an international organization while providing pragmatic and business-oriented advice

  • Relationship building, collaborative, and negotiation abilities

  • Ability to communicate complex issues effectively, both verbally and in writing; fits message to audience

  • Ability to prioritize and handle shifting priorities; manage multiple projects and meet deadlines

  • Strong professional drive, self-directed, and highly motivated with a growth mindset

  • Demonstrated attention to detail, problem-solving ability, and strong organizational and time management skills

  • Proficient in using the full suite of Microsoft Office programs

Preferred Qualifications

  • Hands-on transactional experience handling complex IP issues, including IP license agreements

  • Experience with open source-related matters

  • Inhouse experience

  • Understanding of trade secret laws, rules and procedures to develop, advise, and counsel clients on protection, risk avoidance, and enforcement strategies

  • Patent preparation and prosecution skills

  • Experience with managing patent portfolios, including foreign patent prosecution

  • Experience with providing counsel, support, and training to domestic and international colleagues regarding intellectual property matters, such as meeting with business clients engaged in product development and innovation

Additional Details

  • Location: The position is based out of New York, NY, Washington, DC., or Sunrise, FL. For highly qualified and experienced applicants, the position may be fully virtual.

  • Travel: Occasional domestic and international travel

  • Visa Sponsorship: Employment eligibility to work with American Express in the U.S. is required as the company will not pursue visa sponsorship for this position

  • COVID Vaccination: If the role you are applying for is designated as hybrid or onsite, you will be required to demonstrate that you have completed your primary COVID-19 vaccination series (i.e. 2 doses for Moderna/Pfizer and 1 dose for J&J), in order to work in or visit any of our offices. This requirement is subject to legally required accommodations.

Intellectual Property Law and Strategy Practice Group

IPLS has global responsibility for American Express's intellectual property portfolio and seeks to complement and advance the company's business objectives through brand protection, competitive positioning, and risk mitigation.

General Counsel's Organization

Where great legal minds influence global business strategy.

Our mission is to protect and strengthen American Express through legal expertise and strategic advice that helps our business partners manage risk, identify opportunities, and deliver on the company's promise of exceptional products and services. Given the dynamic nature of the global payments industry and the valued partnership between our team and the business, we see it as imperative to attract and develop talented people by:

  • Providing rich work experiences and opportunities for professional development

  • Recognizing and rewarding those who drive and deliver results

  • Respecting and valuing diversity, integrity, and personal accountability

American Express

American Express is an equal opportunity employer and makes employment decisions without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, veteran status, disability status, age, or any other status protected by law.

Delivering extraordinary experiences to its customers and employees every day. American Express has been making a difference in people's lives for over 160 years, backing them in moments big and small, granting access, tools, and resources to take on their biggest challenges and reap the greatest rewards.

We also have made a difference in the lives of our people, providing a culture of learning and collaboration, and helping them with what they need to succeed and thrive. We have their backs as they grow their skills, conquer new challenges, or even take time to spend with their family or community. And when they are ready to take on a new career path, we're right there with them, giving them the guidance and momentum into the best future they envision.

Because we believe that the best way to back our customers is to back our people.

The powerful backing of American Express.

Don't make a difference without it.

Don't live life without it.

American Express is an equal opportunity employer and makes employment decisions without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, veteran status, disability status, age, or any other status protected by law.

We back our colleagues with the support they need to thrive, professionally and personally. That's why we have Amex Flex, our enterprise working model that provides greater flexibility to colleagues while ensuring we preserve the important aspects of our unique in-person culture. Depending on role and business needs, colleagues will either work onsite, in a hybrid model (combination of in-office and virtual days) or fully virtually.

If the role you are applying for is designated as hybrid or onsite, you will be required to demonstrate that you have completed your primary COVID-19 vaccination series (i.e. 2 doses for Moderna/Pfizer and 1 dose for J&J), in order to work in or visit any of our offices. This requirement is subject to legally required accommodations.

US Job Seekers/Employees

  • Click here to view the "EEO is the Law" poster and supplement and the Pay Transparency Policy Statement.

If the links do not work, please copy and paste the following URLs in a new browser window: https://www.dol.gov/agencies/ofccp/posters to access the three posters.


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Director & Counsel - IP Risk Mitigation - IP Law & Strategy

American Express