Senior Counsel, Intellectual Property - Bethesda, Md (hybrid)

GEICO GEICO · Insurance · Bethesda, MD

Senior Counsel, Intellectual Property role at GEICO, focusing on developing and managing the company's patent portfolio, advising on IP strategy, and supporting engineering teams with open source and IP issues. The role involves invention harvesting, patent prosecution, trademark management, IP enforcement, and delivering IP trainings, with a specific emphasis on patent eligibility for software. The company is rapidly advancing strategies in AI, software infrastructure, and UX/UI.

What you'd actually do

  1. Conducting invention harvesting sessions, making patent filing decisions, and managing outside patent counsel for effective patent application drafting and prosecution.
  2. Supporting engineering teams with respect to open source licensing and open source community participation.
  3. Managing outside trademark counsel for effective trademark clearances, filing and prosecution of trademark applications, and renewal of trademark registrations.
  4. Engaging in IP enforcement efforts, including addressing unauthorized online uses of GEICO’s trademarks.
  5. Delivering IP trainings to software engineering, UX/UI design, product, and business teams.

Skills

Required

  • J.D. or LL.M. degree from an accredited law school
  • active license to practice law in a U.S. jurisdiction
  • registration as patent attorney with the U.S. Patent & Trademark Office
  • Undergraduate degree in computer science, computer engineering, or electrical engineering, or significant professional experience with software
  • At least five years of experience practicing intellectual property law
  • significant experience drafting and prosecuting patent applications
  • Deep understanding of patent law, in particular patent eligibility (35 USC 101), as applied to software
  • Ability to work autonomously
  • interest in cultivating collaborative working relationships

Nice to have

  • In-house legal experience
  • Professional experience in a technical field, e.g., as a software engineer
  • Experience with open source software
  • design patents
  • trademark practice
  • UDRP actions and online brand enforcement
  • IP litigation
  • IP licensing
  • IP support for commercial transactions

What the JD emphasized

  • significant experience drafting and prosecuting patent applications
  • Deep understanding of patent law, in particular patent eligibility (35 USC 101), as applied to software