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(NY) New York, Associate Counsel, IP - American Express


The General Counsel’s Organization of American Express is seeking a hard-working, highly-motivated and creative patent attorney.  The attorney will join the Intellectual Property Law and Strategy (IPLS) practice group as Associate Counsel - Patents, and report to the Chief IP Counsel.  The IPLS is the legal function that handles intellectual property issues across the company world-wide, including patent filing and prosecution, patent litigation and intellectual property due diligence to support M&A and other commercial transactions. 

The attorney in this position will work with clients across multiple functional areas to strategically protect the company’s intellectual property interests.  The work will include client counseling; managing patent preparation and prosecution; rendering legal opinions with respect to patentability, validity and freedom to operate; advising on intellectual property aspects of agreements; and, as needed, supporting patent litigation, due diligence reviews and intellectual property related transactional work. 

Responsibilities include:
  • Partner with management and colleagues to develop, implement and execute policies and practices that drive a proactive, business oriented IP program
  • Provide clear, actionable and business-savvy intellectual property advice to business clients engaged in product development and innovation
  • Build the company’s patent portfolio through strategic patent preparation and prosecution
  • Managing patent applications throughout the patent lifecycle by working directly with the inventor community and outside patent prosecution counsel to ensure high quality patent applications for strategically important inventions
  • Collaborating on the invention disclosure review process to help ensure that the best inventions are identified and patented
  • Collaborating with business and technical teams in invention mining sessions and patent education sessions
  • Educate clients on important intellectual property issues and forge strong client relationships that leverage opportunities to identify, create and protect valuable intellectual property
  • Manage intellectual property risk, including overseeing freedom-to-operate analyses and rendering opinions with respect to patent infringement and validity
  • Provide support, as needed, on intellectual property due diligence for strategic transactions, intellectual property litigation, and intellectual property related transactional work
  • Participate as team member, offering thought leadership for cross-subject matter practice group issues and projects
Are you ready for the challenge?
Minimum qualifications:
  • B.S. degree and/or advanced degree in Electrical Engineering, Computer Engineering, Physics, or Computer Science
  • J.D. from a highly respected law school  and admission to a state bar
  • Admission to practice before the USPTO
  • At least 3 years of patent attorney experience with reputable, highly rated law firms and/or financial services or technical companies
  • Excellent patent preparation and prosecution skills, with experience in managing patent prosecution
  • Comprehensive understanding of intellectual property case law, rules and regulations
  • Proficient in using the full suite of Microsoft Office programs  
Preferred qualifications:
  • Strong analytical and problem-solving skills
  • Ability to manage and prioritize competing demands while maintaining high attention to detail and meeting deadlines
  • Ability to communicate complex issues clearly and persuasively, in both oral and written format
  • Ability to build relationships and partner with others to drive results 
  • Capacity to be agile and pivot appropriately when challenged with new information or evolving circumstances  
  • Exceptional interpersonal skills and collaborative work style
  • Effective oral and written communication skills; fits message to audience
  • Self-directed, highly motivated
  • Learning agility
  • Growth mindset
  • Attention to detail
  • Great problem-solving skills
  • Well organized and resourceful
  • Strong professional drive
  • Excellent analytical and intellectual capabilities
  • Excellent relationship building, influencing and negotiating abilities