Intellectual Property Counsel

Nidec Corporation; St. Louis (MO); On-site; USD 130,000 - 180,000; Full time

Job summary

A leading technology firm in St. Louis is looking for an Intellectual Property Counsel - Director. This role includes developing and executing global IP strategies, managing patent portfolios, and providing leadership on IP-related legal matters. The ideal candidate has extensive experience in patent prosecution and a Juris Doctorate from an accredited institution. This position offers a chance to engage with diverse technologies and contribute to the firm's innovative initiatives across the Americas.

Qualifications

• 5+ years of patent prosecution experience is essential.
• 10-15 years of overall IP experience in legal or corporate environments.
• Admission to practice before the U.S. Patent and Trademark Office.

Responsibilities

• Develop and execute a comprehensive global IP strategy.
• Manage all IP due diligence and provide counsel to management.
• Direct and supervise outside counsel as necessary.

Skills

Patent prosecution

Legal strategy implementation

Interpersonal skills

Effective communication

Problem-solving

Education

Juris Doctorate from an accredited law school

Advanced technical degree (Masters or Doctorate)

Job description

Intellectual Property Counsel page is loaded## Intellectual Property Counsellocations: North America/USA/Missouri/St. Louis - Nidec, MOtime type: Full timeposted on: Posted Todayjob requisition id: R0014790We begin with dreams. Dreams drive our motivation. Dreams are our future. The world's dreams, people's dreams, our dreams. Our passion creates ideas that make dreams come alive. Technology and products that were only dreams become reality.All for dreams. Dreams challenge and the Nidec-Group will continue to meet the challenge. For the world's and people's tomorrows; the world's first, the world's best technologies and products; we will continue our part in creating a better society.**Job Summary****Job Description****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.**Knowledge, Skills, & Abilities*** Technical degree required, electrical or mechanical engineering preferred.* Advanced technical degree (Masters or Doctorate) in the above discipline(s) 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.* Litigation experience is a plus.* Exceptional interpersonal skills and collaborative work style.\*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.**Additional Job Details****Equal Employment Opportunity and Affirmative Action at Nidec** Nidec is an Equal Employment Opportunity (EEO) and Affirmative Action Employer encouraging diversity in the workplace. All qualified applicants receive consideration for employment without regard to their age, gender, gender identity, sexual orientation, race, color, genetic information, religious creed, national origin, physical or mental disability, protected veteran status, or any other characteristic protected by law. For more information regarding your (EEO) rights as an applicant, please visit the following website: http://www1.eeoc.gov/employers/upload/eeoc\_self\_print\_poster.pdf**Work Shift Schedule****No Soliciting**Nidec will not accept unsolicited resumes from individual recruiters or third party recruiting agencies in response to Nidec job postings. No fee will be paid to third parties who submit unsolicited candidates directly to our hiring managers. Pre-approval from the Nidec Talent Acquisition team is required before any external candidate can be submitted and such candidate must be submitted to the Nidec Talent Acquisition team.