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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.

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.