Company: American Express
Position: Director & Counsel – Patent Counsel
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.
About the General Counsel’s Organization (GCO)
The GCO is 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
Your Role in This Position:
The General Counsel’s Organization (GCO) of American Express is seeking an experienced patent attorney with strong patent preparation and prosecution experience. 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 involves providing legal advice on patent-related issues and will primarily include building the company’s global patent portfolio by meeting with inventors, conducting invention mining and ideation sessions, managing patent preparation and prosecution by outside counsel, and formulating policies and guidance for IP-related transactional issues.
Job Responsibilities:
- Counseling American Express with respect to all aspects of patents, including but not limited to the following.
- Building the company’s patent portfolio by meeting with inventors and reviewing their submissions, coordinating invention mining and ideation sessions, and partnering with senior colleagues to develop and execute practices that drive a proactive, business-oriented patent program.
- 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.
- Rendering legal opinions with respect to patentability, validity and freedom to use.
- Conducting and synthesizing patent landscape studies.
- Formulating policies and guidelines for patent related issues, such as creating toolkits for non-IP attorneys and non-legal business clients, improving portfolio development processes, and encouraging patent-related practices consistent with the goals of American Express.
- Supporting patent due diligence on strategic transactions.
- Forging strong client relationships that leverage opportunities to develop, implement and execute policies and practices that drive a proactive, business-oriented, and reasoned patent program. By way of example, the responsibilities will include educating clients on important patent 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’ patent practices.
Contact: Mario A. Magana – mario.a.magana1@aexp.com
Qualifications:
- J.D. with admission in good standing to a U.S. state bar.
- Registered patent attorney with the U.S. Patent and Trademark Office.
- S. degree and/or advanced degree in Electrical Engineering, Computer Engineering, or Computer Science, or practical experience with software-based systems.
- 5+ years of relevant attorney experience within or representing reputable, highly rated law firms, or financial service or technology entities.
- Substantial patent preparation and prosecution experience, including the development of domestic and foreign patent properties.
- Comprehensive understanding of patent related 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.
Preferred Qualifications:
- Reviewing and negotiating licenses and IP-related transactions in non-litigious commercial transactions.
- Ability to assist with patent defensive, offensive, and risk mitigation matters if needed.
- Experience conducting due diligence of potential mergers and acquisitions.