Patent Attorney

ZF Group; Northville (MI); On-site; USD 120,000 - 180,000; Full time

Job summary

The US Patent Attorney at ZF Group will collaborate with European and Asian IP Counsels to provide strategic vision and daily oversight for managing intellectual property directives across the organization. Responsibilities include portfolio management, patent drafting/prosecution, licensing, due diligence, and supporting enforcement and third-party claims in the US.

Ideal candidates have 5+ years in IP law, a JD, and a technical degree in electrical/electronics/CS or related fields, with USPTO

Qualifications

• 5+ years of experience in intellectual property law practice within a law firm and/or in-house.
• Technical background in electrical/electronics/CS/physics is valued and USPTO admission is required.

Responsibilities

• Collaborate with global IP teams to manage current and future IP assets.
• Oversee invention disclosure process and patent drafting/prosecution in the US.
• Coordinate with outside patent counsel and internal clients on IP matters.
• Provide IP business transactions support, licensing, and due diligence.

Skills

IP law

US patent prosecution

Patent strategy

Legal risk advisory

Education

Juris Doctor

Job description

The US Patent Attorney will collaborate with the European and Asian IP Counsels and will provide strategic vision and daily operation oversight in managing current and future intellectual property to develop and implement overall directives. Particular aspects of this role will be portfolio management, intellectual property business transactions, dispute and litigation support, licensing, inhouse patent drafting and patent prosecution, support for enforcement and defense of third-party claims, publication review, due diligence, and opinion work. The US Patent Attorney will be an integral working partner with the company's global business units and product development organizations, handling intellectual property assets and collaborating with intellectual property teams thereby supporting many of the ZF divisions.

Job Description

Job description:

About the team:

The US Patent Attorney will collaborate with the European and Asian IP Counsels and will provide strategic vision and daily operation oversight in managing current and future intellectual property to develop and implement overall directives. Particular aspects of this role will be portfolio management, intellectual property business transactions, dispute and litigation support, licensing, inhouse patent drafting and patent prosecution, support for enforcement and defense of third-party claims, publication review, due diligence, and opinion work. The US Patent Attorney will be an integral working partner with the company's global business units and product development organizations, handling intellectual property assets and collaborating with intellectual property teams thereby supporting many of the ZF divisions.

What you can look forward to as a Patent Attorney:

• This position will report to the ZF US Lead Counsel and will hold responsibility for certain facets of the intellectual property in-house practice
• Manage invention disclosure process and work closely with internal clients on all matters relating to inventions.
• Internal preparation of patent applications and patent prosecution matters.
• Direct and oversee outside patent counsel.
• Take Responsibility for US patent infringement matters, patent licensing cases, transaction and agreement support in the US, freedom to operate evaluations, and all other matters relating to part of the company’s intellectual property assets, focusing on US matters.
• Provide general commercial advice in all areas of the company's operations, including contract negotiation and review with respect to US law.
• Software licensing relating to the Company’s products consistent with US practice.
• Performing IP due diligence and developing contracts for divestitures, acquisitions, investments, and joint ventures.
• Provide expertise and training to Engineering teams relating US intellectual property policies, procedures and topics.

Your profile as a Patent Attorney:

• 5+ years of experience in intellectual property law practice within a law firm and/or in-house.
• Juris Doctor degree
• Technical degree in electrical, electronics, computer engineering, physics, electro-mechanical or related field (preferred)
• Fully qualified Patent Attorney admitted to the USPTO
• Experience in working in the intellectual property field in the area of electronics-based technology including software, at a high technologycompany or law firm. Automotive experience in the field valued.
• Software experience and knowledge of open-source compliance valued.
• Electrical engineering, computer science, mathematics or physics background valued.
• Excellent knowledge of US laws and practices.
• Expertise in filing patent applications and related prosecution filings with the USPTO
• Strong interpersonal skills, including the ability to establish effective working relationships with engineers, senior executives and colleagues within the legal and intellectual property teams and ability to work effectively in an international multi-cultural environment.
• Hard working, well organized, able to manage numerous projects simultaneously under deadline pressure, and experience managing and completing complex projects in a demanding environment.
• Strategic thinker with focus on practical client advice and the ability to advise on legal risks within a business context.
• Ability and train team members and inhouse clients.
• Excellent oral and written communication and negotiation skills required.
• Must possess commitment to professionalism, integrity, and collegiality.
• Ability to multi-task and accomplish tight deadlines in a team environment