Intellectual Property Counsel

Nidec Motor Corporation•St. Louis, MO

About The Position

Intellectual Property Counsel - Director Intellectual Property Counsel responsible for all aspects of IP for various businesses in the Americas with diversified businesses, products and technologies. A product and marketing development legal strategist, with exceptional ability to define global IP strategies, lead and execute legal strategy implementation, develop strong patent/trademark portfolios and vision and deliver sustainable results in different business environments. Develop, manage and execute a comprehensive and effective global IP strategy for Nidec Motor Corporation (“NMC”) portfolio of products and technologies at all stages --- research findings, invention harvesting, product in development, gate reviews, or ready for commercialization. Collaborate with engineering and technology teams to build strong patent portfolios around key assets to ensure a long-term competitive advantage. Lead all IP due diligence, review, and participate in agreement drafting and negotiations, including in-house drafting of certain patent applications, prosecution and efficient management and collaboration of and with outside counsel. Provide general and directed IP counsel and education to NMC engineers, management, and leadership while operationally supporting NMC’s corporate and business development and M&A efforts with regard to IP due diligence, competitive intelligence and insight, and IP licensing. Advise with regard to brand protection and omni channel marketing by working with business units and sales team collaborating to implement global trademark strategies. Ensure freedom to operate and minimize exposure to third party IP, including 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 mitigating NMC’s reliance on external counsel over time and building in-house functions, policies and procedures. Collaborate with NCJ and associated subsidiaries for global IP strategies Business Implementation: 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. Product Innovation: Generated centralized patent searching optimization, onboarded and trained engineers on new patent search software, improved policies/procedures for global trademark watch. Portfolio Strategist: Drive increased invention disclosure submittals, reduced patent prosecution and maintenance costs. Advocate of direct and compact prosecution with patent offices to achieve strong patent claims relative to business integrity, commercial products, competitor products, licensing strategies, and patent invalidity challenges. This currently consists of all MOEN businesses and HVAC and C&I in the Americas. Also provides ad hoc support to NAMA, Nidec Minster, Nidec America and Nidec Elesys.

Requirements

Technical degree required, 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.
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.
Exceptional interpersonal skills and collaborative work style.

Nice To Haves

Advanced technical degree (Masters or Doctorate) in the above discipline(s) preferred.
Litigation experience is a plus.

Responsibilities

Define global IP strategies
Lead and execute legal strategy implementation
Develop strong patent/trademark portfolios and vision
Deliver sustainable results in different business environments
Develop, manage and execute a comprehensive and effective global IP strategy for Nidec Motor Corporation (“NMC”) portfolio of products and technologies at all stages --- research findings, invention harvesting, product in development, gate reviews, or ready for commercialization.
Collaborate with engineering and technology teams to build strong patent portfolios around key assets to ensure a long-term competitive advantage.
Lead all IP due diligence, review, and participate in agreement drafting and negotiations, including in-house drafting of certain patent applications, prosecution and efficient management and collaboration of and with outside counsel.
Provide general and directed IP counsel and education to NMC engineers, management, and leadership while operationally supporting NMC’s corporate and business development and M&A efforts with regard to IP due diligence, competitive intelligence and insight, and IP licensing.
Advise with regard to brand protection and omni channel marketing by working with business units and sales team collaborating to implement global trademark strategies.
Ensure freedom to operate and minimize exposure to third party IP, including 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 mitigating NMC’s reliance on external counsel over time and 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.
Generated centralized patent searching optimization, onboarded and trained engineers on new patent search software, improved policies/procedures for global trademark watch.
Drive increased invention disclosure submittals, reduced patent prosecution and maintenance costs.
Advocate of direct and compact prosecution with patent offices to achieve strong patent claims relative to business integrity, commercial products, competitor products, licensing strategies, and patent invalidity challenges.