Associate General Counsel, Patents

Summary

Join Scout Motors and become part of an iconic brand revolutionizing the electric pick-up truck and rugged SUV market. Collaborate with the Chief IP Counsel to develop and implement a strategic plan for Scout Motors’ worldwide patent and trade secret portfolio. Serve as a subject matter expert, providing legal and strategic advice on patents, trade secrets, and other IP-related matters. Build relationships with various teams, providing training and guidance to facilitate the development of Scout Motors’ patent and trade secret portfolios. Conduct and oversee patentability and landscape searches, patent application preparation, and prosecution. Assist in developing and implementing a worldwide freedom-to-operate strategy. Draft and negotiate IP-focused agreements. Assist business leaders with M&A strategy by evaluating potential targets and conducting IP due diligence. Assist in developing and implementing the company’s open-source compliance program. This remote role (excluding NYC) requires occasional in-person meetings and travel.

Requirements

• J.D. from an accredited law school and member in good standing of the bar in at least one state in the United States
• Minimum 12 years' experience as a practicing patent attorney, in-house experience preferred
• Admitted to practice and in good standing with the U.S. Patent and Trademark Office
• Bachelor’s degree in mechanical engineering, electrical engineering, computer science / engineering, automotive technology, or related field
• Enthusiasm for practicing patent law in an extremely fast-paced, start-up environment
• Ability to provide both legal and strategic advice to Scout Motors’ executives and leaders
• Superb oral and written communication skills with the ability to explain legal concepts to non-attorneys on a regular basis
• Excellent legal judgment, business acumen, practical, and common-sense skills to understand the needs of a start-up
• Ability to prioritize work and manage deadlines
• Ability to manage uncertainty and novelty and to thrive in a fast-paced start-up environment

Responsibilities

• Collaborate with the Chief IP Counsel in developing and implementing the strategic plan for Scout Motors’ worldwide patent and trade secret portfolio
• Serve as subject matter expert for entire organization, providing legal and strategic advice on patents, trade secrets and other IP-related matters
• Build relationships with the Engineering, Product, Design, Growth and Strategy Teams, and provide training, guidance and encouragement, to facilitate the development of Scout Motors’ patent and trade secret portfolios, including conducting invention mining sessions and participating in the product review process
• Conduct and oversee patentability and landscape searches and analyses and oversee patent application preparation and prosecution to support the company’s patent filing strategy and process
• Assist in developing and implementing a worldwide freedom-to-operate strategy, including conducting and overseeing freedom-to-operate searches, preparing analyses, and formulating informal opinions on patent clearance/non-infringement
• Draft and negotiate intercompany and third-party IP-focused agreements, including in-bound and out-bound license and joint development agreements, as well as IP terms of commercial, strategic partnership, financing and other agreements
• Assist business leaders with M&A strategy by helping to evaluate potential targets, conducting IP due diligence, advising corporate development personnel on IP legal and strategic matters, and drafting and negotiating IP-related terms in purchase agreements
• Assist in developing and implementing the company’s open-source compliance program, including providing guidance and training to software development teams

Benefits

• Competitive insurance including: Medical, dental, vision and income protection plans
• 401(k) program with: An employer match and immediate vesting
• Generous Paid Time Off including: 20 days planned PTO, as accrued
• 40 hours of unplanned PTO and 14 company or floating holidays, annually
• Up to 16 weeks of paid parental leave for biological and adoptive parents of all genders
• Paid leave for circumstances related to bereavement, jury duty, voting time, or military leave
• Corporate Vehicle Program with: Eligibility for 1 assigned vehicle
• A mobility stipend
• Pay Transparency