Volkswagen Group of America is seeking a Patent Attorney. Work on a wide range of intellectual property issues with the Assistant General Counsel, Intellectual Property & Litigation on the implementation of patent administration process at VWGoA, with a focus on the development of a portfolio for innovations originating from VW’s Engineering Research Lab in Belmont, CA, and Engineering & Planning Center in Chattanooga, TN. The attorney will draft and prosecute patent portfolio applications relating to autonomous vehicle technology, mobile applications, connected cars and related future automotive technology. The attorney will work closely with engineers to help analyze the patentability of inventions, search for related inventions, prepare and help prosecute patent applications at the USPTO, aid in assessing infringement risks for new products and help guide the development of new products. The patent attorney will interact with the Patent Departments of AUDI AG, Porsche AG and Volkswagen AG for coordination of US activities to assist in implementing a VW Group-wide global patent strategy. The attorney will also review and assist in drafting non-disclosure, research, joint development, license and other agreements involving use, transfer and ownership of intellectual property.
- Draft patent applications and coordinate filings (as necessary with outside counsel) and interact with the patent departments for Volkswagen AG, AUDI AG and Porsche AG
- Counsel engineers and other technical personnel regarding patentability, patent procedure, portfolio strategy and related issues and design and conduct on-site trainings for them
- Help develop and implement strategy and procedures for patent management at VWGoA
- Review projects for inventions or ideas for potential patent filings, including assist with prior art searches and preparation of invention disclosures
- Conduct patentability and freedom-to-operate reviews
- Review and assist in the drafting of nondisclosure, research, license, and other agreements involving the use, transfer, or ownership of intellectual property
- Coordinate with financial and accounting departments in U.S. and Germany regarding billing and reimbursement issues, where applicable
- Implement record-keeping and other appropriate administrative procedures to support patent strategy
- Other patent-related support as directed by VWGoA OGC or by the patent departments of Volkswagen AG, AUDI AG or Porsche AG
Years of Experience
- 7-10 years of experience as a registered United States patent attorney, with an emphasis on current developments relating to electrical and telecommunications technologies deployed in passenger vehicles.
- Juris doctor degree from an ABA-approved law school
- Bachelor’s degree in electrical engineering, or related field, with an excellent understanding of vehicle related technical subject matter
- Registration Number to practice before the United States Patent & Trademark Office
- Post-graduate degree in electrical engineering
- Technical expertise in electrical innovations deployed in vehicles
- Highly detail-oriented, efficient with time and priority management and strong organizational skills
- Excellent decision making, problem solving skills, technically proficient
- Excellent verbal and written communication and presentation skills
- Proficiency with Microsoft Office Products (Word, Excel and PowerPoint)
- Innovative, self-starter and highly independent
- Strong inter-personal skills, ability to collaborate in a team environment on engineering topics
- Admitted to practice before the California Bar
- Registered to practice at the United States Patent & Trademark Office
- 7-10 years of industry or law firm experience
- Technical ability commensurate with a Bachelor’s degree in electrical engineering, or related field, with an excellent understanding of vehicle related technical subject matter
- Significant experience in drafting patent applications and prosecuting such applications with PTO
- Verbal and written communication skills
- Strong problem solving skills and ability to think analytically and conceptually
- Resource management
- Influencing and negotiation skills
- Experience with an automotive company, supporting patent prosecution functions.
- Integration skills – ability to join people, processes or systems
- Experience mining innovations in a research and development organization to build IP portfolio assets
- Proficient understanding of patent issues outside the United States
- Travel approximately 35%
We are proud to be an EEO employer M/F/D/V. We maintain a drug-free workplace and perform pre-employment substance abuse testing.
To apply, please send a resume and cover letter to: Ellen.Catlett@vw.com.
Employer Type: Large Corporation