Company: American Express
Position: Director & Counsel, Intellectual Property Transactions
Location: New York, NY
Description:
You Lead the Way. We’ve Got Your Back.
With the right backing, people and businesses have the power to progress in incredible ways. When you join Team Amex, you become part of a global and diverse community of colleagues with an unwavering commitment to back our customers, communities and each other. Here, you’ll learn and grow as we help you create a career journey that’s unique and meaningful to you with benefits, programs, and flexibility that support you personally and professionally.
At American Express, you’ll be recognized for your contributions, leadership, and impact—every colleague has the opportunity to share in the company’s success. Together, we’ll win as a team, striving to uphold our company values and powerful backing promise to provide the world’s best customer experience every day. And we’ll do it with the utmost integrity, and in an environment where everyone is seen, heard and feels like they belong.
Join Team Amex and let’s lead the way together.
Your Role in This Position:
The General Counsel’s Organization (GCO) of American Express is seeking an experienced intellectual property (IP) transactional attorney. The attorney will join the Intellectual Property Law and Strategy (IPLS) group as Director & Counsel and will report to Vice President & Senior Counsel. IPLS has global responsibility for the company’s intellectual property portfolio and seeks to complement and advance the company’s business objectives through brand protection, competitive positioning, and risk mitigation.
The work primarily involves providing legal advice on IP-related transactional issues, with a particular emphasis on patents, trade secrets and software. By way of example only, the work will include reviewing, revising, and negotiating IP-related provisions of commercial transactions, formulating policies and guidance for IP-related transactional issues, and conducting IP-related due diligence for potential mergers and acquisitions. The attorney will support multiple business units.
Job Responsibilities:
- Counseling American Express with respect to all aspects of IP as it pertains to transactions and related third-party interactions, including but not limited to the following.
- Reviewing, revising, and negotiating IP related issues in non-litigious commercial transactions, such as issues relating to IP ownership, IP licensing and exclusivity, and IP risk allocation.
- Providing advice on potential mergers and acquisitions, including conducting IP-related due diligence.
- Supporting litigators with respect to settlement agreements, patent license agreements, defense-related arrangements, protective orders, etc.
- Formulating policies and guidelines for IP-related transactional issues, such as refreshing standard agreements and templates, creating toolkits for corporate attorneys, other non-IP attorneys, and non-legal business clients, and encouraging IP-related practices consistent with the goals of American Express.
- Forging strong client relationships that leverage opportunities to develop, implement and execute policies and practices that drive a proactive, business-oriented, and reasoned IP program.
- By way of example, the responsibilities will include educating clients on important IP issues and participating as a team member by offering thought leadership for cross-subject matter practice group issues and projects.
- Monitoring intellectual property law developments that may impact American Express’ contractual relationships with third parties.
Contact: Mario A. Magana – mario.a.magana1@aexp.com
Qualifications:
- J.D. with admission in good standing to a U.S. state bar.
- 5+ years of relevant attorney experience within or representing reputable, highly rated law firms, or financial service or technology entities.
- Substantial IP-related transactional experience, with particular emphasis on license agreements relating to patents, trade secrets and software-related IP issues, including by way example:
- Contract drafting experience;
- Experience with critically evaluating contractual changes proposed by another party, identifying contract provisions applicable to client goals, and devising reasoned approach in response to same;
- Experience with effectively conducting negotiations including advising clients on negotiation strategies; and
- Knowledge of IP issues that often arise in connection with commercial transactions and knowledge of common ways that the issues are often resolved.
- Comprehensive understanding of intellectual property case law, rules, and regulations.
Possesses the following competencies:
- Ability to formulate and evaluate the strength of legal arguments and assess the risk of business initiatives, including the application of business understanding and sound legal and professional judgment when devising solutions to highly complex issues and risks.
- Ability to ensure that time, effort, and resources are allocated efficiently, particularly with respect to daily responsibilities, special projects, deadlines, and management/prioritization of multiple projects.
- Is self-directed, highly motivated and has a growth mindset with a strong professional drive.
- Ability to deliver clear and concise communications for the purposes of education, influence, and advocacy, both verbally and in writing.
- Possesses a collaborative spirit and builds strong partnerships with colleagues and clients with a high degree of professionalism.
- Is well organized and resourceful, pays attention to detail, and has great problem-solving skills.
- Proficient in using the full suite of Microsoft Office programs.
- Demonstrated ability to build excellent relationships
- Willingness and flexibility to be a team player and take on new responsibilities and challenges
- Excellent oral and written communication skills