Intellectual Property Counsel

Worker Type

Regular

Job Description

Summary

Reporting to the Associate General Counsel, Intellectual Property, the Intellectual Property (IP) Counsel will be directly involved in managing and expanding AeroVironment's global intellectual property portfolio, with a focus on patents and trademarks covering uncrewed systems, munitions, robotics, autonomy, communications, and related technologies. The IP Counsel will work directly with AeroVironment's leadership, engineering, business and compliance teams to help shape and implement AeroVironment's intellectual property strategy to help the organization achieve its strategic and growth objectives.

The ideal candidate will have at least five (5) years of substantive experience in patent and intellectual property practice, including patent and trademark prosecution, portfolio management, IP transactions, and IP support for U.S. government contracts. This role requires strong prior experience, the ability to work independently and in cross-functional teams, and the ability to operate with significant autonomy under the guidance of more senior counsel.

Position Responsibilities

• Assist AV's Associate GC - IP in managing and strategically developing the company's domestic and international patent and trademark portfolios in alignment with AeroVironment's business objectives.

• Evaluate IP risk, including freedom-to-operate (FTO) and clearance analyses for new products and technologies.

• Conduct infringement, validity, and prior art analyses; assist in the development of written opinions and risk assessments.

• Conduct invention harvesting sessions and work closely with engineering, product, and business teams to identify and protect key innovations.

• Work with outside counsel to prepare, file, and prosecute patent and trademark applications before the USPTO and foreign patent offices.

• Draft, review, and negotiate IP-related agreements, including licenses, joint development agreements, NDAs, technology transfer agreements, and collaboration agreements.

• Advise on IP ownership, assignment, and rights allocation in complex commercial relationships and U.S. government contracts.

• Support the operation of the CTO's IP Management Committee, including managing IP budgets, preparing agendas and materials, capturing action items, and driving follow-up activities.

• Support IP litigation matters (patent, trademark, trade secret) and related appeals, including management of outside IP litigation counsel.

• Support IP aspects of mergers and acquisitions, including due diligence, IP valuation, and risk assessment.

• Monitor changes in laws, regulations, and industry best practices to help keep IP portfolio practices current.

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Basic Qualifications (Required Skills & Experience)

• Juris Doctor (J.D.) degree from an ABA-accredited law school.
• Admission to at least one U.S. state bar in good standing.
• Minimum of 5 years of experience in substantive IP practice, including patent and trademark portfolio prosecution and management, IP litigation, licensing and technology agreements, and U.S. government contracts (data rights, FAR, DFARS, CRADAs, SBIRs, etc.).
• Registration to practice before the U.S. Patent and Trademark Office (USPTO) as a patent attorney.
• Technical Degree with significant experience with technologies relevant to AV's business (e.g., aerospace, mechanical/electrical engineering, robotics, systems engineering, computer systems and software, communications, autonomy and artificial intelligence).

• Ability to learn quickly and to assist and advise on non-IP legal matters.

• Strong business acumen with the ability to balance competing demands and priorities.
• Excellent analytical, communication, and project management skills with the ability to provide clear, concise advice on complex topics to business partners, including senior leadership, engineering, business development, finance and compliance personnel.
• Ability to obtain and maintain a U.S. government security clearance, if required.
• Proficient in MS Office and other office software productivity tools.
• Occasional travel within the continental U.S.

Other Qualifications & Desired Competencies

• Combination of law-firm and in-house or U.S. government experience.
• Experience working with or for a technology-driven company, preferably in aerospace/defense or a related field.
• Uses vision to think beyond the immediate situation, explore multiple potential paths, and adapt decision-making style based on the situational circumstances.
• Demonstrates the ability to develop and maintain internal and external trusting, professional relationships.
• Assesses the degree of risk and opportunity in plans or actions and takes appropriate action to mitigate them or makes plans to build on the opportunity.

Physical Demands

• Ability to work in an office environment (Constant).

Special Requirements

• U.S. Citizen, U.S. Permanent Resident (Green Card holder) or asylee/refugee status as defined by 8 U.S.C. 1324b(a)(3) required.

Clearance Level

No Clearance

The salary range for this role is:
$111,000 - $169,250

AeroVironment considers several factors when extending an offer, including but not limited to, the location, the role and associated responsibilities, a candidate's work experience, education/training, and key skills.

ITAR Requirement:

This position requires access to information that is subject to compliance with the International Traffic Arms Regulations ("ITAR") and/or the Export Administration Regulations ("EAR"). In order to comply with the requirements of the ITAR and/or the EAR, applicants must qualify as a U.S. person under the ITAR and the EAR, or a person to be approved for an export license by the governing agency whose technology comes under its jurisdiction. Please understand that any job offer that requires approval of an export license will be conditional on AeroVironment's determination that it will be able to obtain an export license in a time frame consistent with AeroVironment's business requirements. A "U.S. person" according to the ITAR definition is a U.S. citizen, U.S. lawful permanent resident (green card holder), or protected individual such as a refugee or asylee. See 22 CFR a7 120.15. Some positions will require current U.S. Citizenship due to contract requirements.

Benefits: AV offers an excellent benefits package including medical, dental vision, 401K with company matching, a 9/80 work schedule and a paid holiday shutdown. For more information about our company benefit offerings please visit: http://www.avinc.com/myavbenefits.

Principals only need apply. NO agencies please.