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Senior Patent Counsel

bw_wordkay_placeAuburn Hills - Michigan - USA

bw_wordkay_timeMay 12, 2020

bw_wordkay_optionFull time

bw_wordkay_idR2020-0648


COMPANY OVERVIEW

BorgWarner is a global product leader in powertrain solutions. We focus on developing leading powertrain technologies that improve fuel economy, emissions, and performance. Our facilities are located across the globe to provide local support for our diverse customer base.

BorgWarner is a company of independent thinkers who share a passion for the latest vehicle technology, enjoy working in a fast-paced, collaborative environment, and desire to play a key role in transforming the transportation landscape.

We engage this talented group of employees with meaningful work, amazing technologies, world-class facilities, and a culture that respects diversity and rewards excellence. It’s an atmosphere that fosters personal growth and allows you to propel your career to the next level.

POSITION SUMMARY

BorgWarner is currently looking for a “dynamic, results-driven” individual to join as a Senior Patent Counsel reporting to the Chief Intellectual Property Counsel, in the Corporate Legal Department at our World Headquarters in Auburn Hills, Michigan.

The Senior Patent Counsel will use their legal expertise to assist with a wide variety of Intellectual property matters in the Corporate Legal Department including; BW Inventions:  monitoring the collection of Invention Records (IRs) from engineers; assigning the (IRs) to outside patent counsel; working with various Business Units to obtain authorizations to file applications and continue patents.

POSITION ACCOUNTABILITIES

  • Avoidance of 3rd party patent rights; working with engineering teams to clear proposed BW products from 3rd party IP rights.
  • Enforcement of BW patents; directing litigation counsel in US/Europe/Asia
  • Prepare and review Nondisclosure Agreements; Joint Development Agreements; IP provisions of commercial agreements
  • Act as the primary Patent Contact for select Business Units; provide BW IP training to engineers
  • Monitor and report on outside counsel IP work as well as Business Unit IP budgets on a monthly basis
  • Provide counsel and assist with IP matters related to M&A
  • Present and report on IP projects to both BW Legal and Business Unit leadership
  • Coordinate IP activities with BW patent agents and managers in the US and Germany
  • Must a leader, strategic thinker, excellent teammate and trusted partner to the Business Units

POSITION COMPETENCIES

  • Priority setting
  • Ethics and values
  • Self-learner
  • Action oriented
  • Ability to function with limited supervision
  • Dealing with ambiguity
  • Timely decision making
  • Listening
  • Functional/Technical
  • Ability to work with and appreciation of different cultures
  • Organizational agility

EDUCATION/EXPERIENCE QUALIFICATIONS

  • Graduated from an accredited law school with a Juris Doctorate.
  • Licensed to practice law in United States.
  • Experience:  10+ years advising engineers and business managers on all types of IP related matters; preparing and reviewing contracts; managing litigation; writing and prosecuting patent applications.
  • Helpful background:  knowledge of patent prosecution in Europe and Asia; exposure to trademarks  
  • Self-starter who is capable of independent function; yet works well in a team atmosphere.
  • Strong interpersonal and communication skills.
  • Knowledge of the global automotive industry is a plus.
  • An international or global perspective is a plus.
  • Registered to practice before the US Patent & Trademark Office is preferred.

Equal Employer Opportunity Statement

BorgWarner is an equal employment opportunity employer such that all qualified applicants will receive consideration for employment without regard to race, color, age, religion, sex, sexual orientation, gender identity/expression, national origin, disability or protected veteran status.

Safety

This position will adhere to safety rules, practices, and training as outlined in all BorgWarner safety policies and procedures. This individual will work in manners that stress the importance of preventing accidents and illnesses. He/she must take every precaution reasonable in the given circumstance for the protection of themselves and coworkers. In addition, he/she is responsible for reporting all injuries and/or possible dangerous situations, incidents, or occurrences to the immediate supervisor.

The statements in this job description are intended to describe the general nature and level of work being performed.  They are not intended as an exhaustive list of all responsibilities, duties and skills required.  They may be supplemented as necessary.

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