Patent Counsel (Contractor)

The selected candidate will counsel engineering teams, researchers, and other business unit stakeholders on patent protection and IP strategy for a wide variety of technologies in the automotive sector, from infotainment and car or app UI, AI and data science, vehicle connectivity, electric vehicle technology, autonomous driving, and will contribute to expanding an intellectual property portfolio that builds on Mercedes Benz’s industry-leading innovation in the automotive industry. This role is open to remote work within the U.S.

Understand and learn different technology areas being developed by Mercedes’s engineering teams, to stay aware of ongoing projects and research across the company in the development of modern vehicles, and identify areas for potential patent and other IP protection.

Conduct invention disclosure meetings with inventors in such technology areas, to understand project roadmaps, specific projects, technical advancements, and inventions in those strategic areas for potential patent filings.

Strategize with engineers, patent team members, management, and other colleagues to create a strategy for IP protection for the innovation being created by Mercedes-Benz in North America. Identify candidate inventions that are suitable for patent protection, and craft claim strategy to protect such inventions via patents.

Work with outside counsel in the preparation of patent applications based on the invention details learned from inventors, as well as perform hands-on drafting of patent applications based on the crafted IP protection/patent claim strategy in the above-mentioned technology areas (e.g., software, AI, autonomous driving, EV technology).

 Work with outside counsel in the prosecution of filed patent applications, as well as directly assist in the formulation and drafting of responses to office actions.

Counsel business units on freedom-to-operate (FTO) topics, including performing risk assessment and proposing measures for mitigating IP and other litigation risk.

Counsel business units on other IP matters, including trademark and brand management topics, software and copyright issues, etc.

Provide training to non-IP colleagues in topics such as requirements for patentability, trade secret protection, trademark protection, and other IP topics.

Minimum 3-5 years years of experience.

BS degree in an engineering or scientific discipline, such as computer science, electrical engineering, mechanical engineering, materials engineering, math, or physics​. 

Ability to communicate with inventors to understand their inventions, and to translate selected inventions to IP strategy, including specifically patent claim strategy.

Ability to review claims and patent specifications drafted by outside counsel, as well as perform hands-on drafting of patent claims and specifications as needed.

Experience with and understanding of patent prosecution/examination process at the U.S. Patent and Trademark Office.  

Registered agent or attorney with the USPTO.

​Preferred candidates may have experience in any of the following: 
(a) counseling clients on freedom-to-operate (FTO) topics relating to patents 
(b) counseling clients on trademark and brand protection matters 
(c) patent litigation 
(d) software licensing or patent licensing