Mercedes-Benz Research & Development North America, Inc.

General Counsel

• Understand and learn different technology areas being developed by Mercedes’s engineering teams, to stay aware of ongoing projects and research across the company in the development of modern vehicles, and identify areas for potential patent and other IP protection.
• Conduct invention disclosure meetings with inventors in such technology areas, to understand project roadmaps, specific projects, technical advancements, and inventions in those strategic areas for potential patent filings.
• Strategize with engineers, patent team members, management, and other colleagues to create a strategy for IP protection for the innovation being created by Mercedes-Benz in North America. Identify candidate inventions that are suitable for patent protection, and craft claim strategy to protect such inventions via patents.
• Work with outside counsel in the preparation of patent applications based on the invention details learned from inventors, as well as perform hands-on drafting of patent applications based on the crafted IP protection/patent claim strategy in the above-mentioned technology areas (e.g., software, AI, autonomous driving, EV technology).
• Work with outside counsel in the prosecution of filed patent applications, as well as directly assist in the formulation and drafting of responses to office actions.
• Counsel business units on freedom-to-operate (FTO) topics, including performing risk assessment and proposing measures for mitigating IP and other litigation risk.
• Counsel business units on other IP matters, including trademark and brand management topics, software and copyright issues, etc.
• Provide training to non-IP colleagues in topics such as requirements for patentability, trade secret protection, trademark protection, and other IP topics.

Patent Counsel/Patent Agent – Contractor

Compliance

• Classification Support: Analyze software features to determine if items fall under EAR or ITAR and assign correct ECCNs as well as collect information to determine Country of Origin, HTS and Schedule B codes, and Supplier Declaration Forms.
• End Use/End User Verifications: Prepare and collect information to verify end use and end user of commodities/services; identify and address red flags that may arise and document accordingly.
• Encryption Review Support: Assist in analyzing software functionality to determine whether software uses, develops, or produces encryption, which may require licensing or notifications to the Bureau of Industry and Security (BIS).
• Technology Analysis: Partner with software development teams to support compliant software releases to international customers. Reviewing software source code, object code, and related technical documentation for export restrictions. Collaborate with software development and engineering teams to understand functionality for accurate classification.
• License Determination and Application Support: Assist in assessing whether an export, transfer, or release requires a license or qualifies for a license exception (e.g., TSU, ENC) and support preparation and submission of export license applications.
• Recordkeeping & Compliance Auditing: Maintain accurate and complete trade compliance records and conduct export audits to identify risks and ensure adherence to U.S. and foreign/export regulations.
• Project Management and Coordination: Manage daily trade compliance operations and coordinate cross-functional activities to keep export processes on track and compliant.

Patent Counsel/Patent Agent – Contractor

Trade Compliance Specialist/Coordinator