Intellectual Property Consultant

Job Description

Intellectual Property Counsel - Director

About the role

Develops and executes a comprehensive global IP strategy for Nidec Motor Corporation ("NMC")'s diverse portfolio of products and technologies across the Americas. Works closely with engineering and technology teams to build strong patent and trademark portfolios.

Responsibilities

• Lead all IP due diligence, review, and agreement drafting and negotiations, including in-house drafting of certain patent applications, prosecution, and efficient management and collaboration with outside counsel.
• Provide general and directed IP counsel and education to NMC engineers, management, and leadership, supporting corporate and business development and M&A efforts with regard to IP due diligence, competitive intelligence, and insight, and IP licensing.
• Advise on brand protection and omni-channel marketing by collaborating with business units and sales teams to implement global trademark strategies.
• Ensure freedom to operate and minimize exposure to third-party IP by providing and drafting clearance or freedom to operate opinions.
• Protect products and manage all IP disputes and litigation, engaging external counsel if needed.
• Supervise and direct outside counsel as needed, while building in-house functions, policies, and procedures.
• Collaborate with NCJ and associated subsidiaries for global IP strategies.
• Conduct global Patent Review Committee to introduce developing technologies to different business units for multiple inputs and present cross-pollination reviews for potential customers of business units.
• Generate centralized patent searching optimization, onboard and train engineers on new patent search software, and improve policies/procedures for global trademark watch.
• Drive increased invention disclosure submittals, reduce patent prosecution and maintenance costs, advocate for direct and compact prosecution with patent offices, and address patent invalidity challenges.

Requirements

• Advanced technical degree (Masters or Doctorate) in electrical or mechanical engineering preferred.
• Juris Doctorate from a major accredited law school required.
• 5+ years of patent prosecution experience required.
• 10-15 years of IP experience at top-tier law firm and/or company.
• Admission to practice before the U.S. Patent and Trademark Office.
• Experience with global patent prosecution, patent appeals, re-examinations, re-issues, and inter partes review proceedings.
• Proven sound business judgment, confidence in influencing decision-making processes, and ability to balance risk and opportunity.
• Able to prioritize, manage multiple projects, and meet or exceed deadlines.
• Effective oral and written communication skills.
• Mature and professional demeanor with a high degree of self-motivation, organization, and problem-solving skills.
• Litigation experience is a plus.
• Exceptional interpersonal skills and collaborative work style.

Qualifications

• Technical degree required, electrical or mechanical engineering preferred.

Skills

• Ability to prioritize, manage multiple projects, and meet or exceed deadlines.
• Effective oral and written communication skills.
• Mature and professional demeanor with a high degree of self-motivation, organization, and problem-solving skills.
• Litigation experience is a plus.
• Exceptional interpersonal skills and collaborative work style.

Benefits

Not specified

Pay

Not specified

Schedule

Not specified