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Chief Intellectual Property Counsel

bw_wordkay_placeAuburn Hills - Michigan - USA

bw_wordkay_timeMay 19, 2020

bw_wordkay_optionFull time

bw_wordkay_idR2020-0664


COMPANY OVERVIEW

BorgWarner is a global product leader in propulsion solutions. We focus on developing leading propulsion technologies that improve fuel economy, emissions, and performance across vehicle platforms. 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 Chief Intellectual Property Counsel (CIPC) in the Corporate Legal Department at our World Headquarters in Auburn Hills, Michigan.

Reporting to the Executive VP, Chief Legal Officer & Secretary, the CIPC will provide a strategic breadth of view addressing BW’s current and future intellectual property and work with other senior leaders to develop and implement overall strategic directives. The CIPC will be able to clearly articulate BW’s IP strategy and will supervise members of BW’s intellectual group, which is expected to include five attorneys and para-professionals. The CIPC will be responsible for the Company’s intellectual property affairs, including client counseling, litigation, licensing and other complex business transactions including, patent drafting, prosecution and enforcement, publication review, due diligence, and trademark matters. The CIPC will be an integral working partner with the company’s research and development organizations, business units, and rest of the Legal department.

POSITION ACCOUNTABILITIES

  • Maintain a solid understanding of BW’s businesses, technology and product goals, and challenges in order to establish and implement intellectual property strategies that facilitate those goals and minimize those challenges.
  • Develop and curate a strategic, global, intellectual property portfolio including patents, copyrights, trademarks and trade secrets.
  • Manage a small team of IP attorneys and para-professionals who are responsible for executing on the company’s intellectual property strategy.
  • Perform due diligence and freedom to operate analysis for new technologies and products.
  • Negotiate, draft and review agreements such as licenses, research agreements, collaboration agreements, confidentiality agreements and material transfer agreements.
  • Conduct, advise, and manage activities surrounding adversarial proceedings for third party IP, including IP litigation, European Oppositions and U.S. IPRs.
  • Manage outside counsel and other resource utilization for value and efficiency.
  • Provide legal advice for marketing teams including review of promotional content.
  • Assist with M&A activities as needed, from due diligence to documentation.
  • Deliver training to address knowledge needs in relevant areas of intellectual property law for the applicable employee audience.
  • Provide legal advice and counsel to R&D and business personnel on a variety of IP related matters.
  • Willing to work on the smallest and simplest, as well as the most complex, legal matters faced by the company.
  • Occasional domestic and international travel will be required

POSITION COMPETENCIES

  • Approaches IP with a strategic mindset by anticipating future business, competitive and legal risks, and looks for creative solutions and opportunities.
  • Strong communication skills; able to work and communicate effectively with all levels of employees and simply explain complex IP issues in business/non-legal terms.
  • Demonstrated high integrity and ethics in all dealings. Professional maturity and confidence in expressing a point of view with management. Non-political. Independent of perceived popularity of the advice.
  • Strong intellect and a desire to learn.
  • Client-service oriented. High sense of urgency and self-motivation.
  • Has a track record for delivering results, taking ownership with a strong sense of accountability.
  • Able to prioritize multiple projects.
  • Strong organizational skills.

EDUCATION/EXPERIENCE QUALIFICATIONS

  • Graduated from an accredited law school with a Juris Doctorate.
  • Licensed to practice law in United States.
  • This position requires an accomplished intellectual property lawyer with strong business orientation, while being an active listener
  • Experience in strategic intellectual property counseling, licensing, litigation management, and other complex business transactions, and in prioritizing multiple tasks under pressure.
  • Has a minimum of 15 years of relevant intellectual property experience with in-depth early training and broad senior level in-house legal experience, including experience managing high volume intellectual property workflow, and experience with electric or mechanical engineering.
  • Experience in a similar role in a comparable company or a senior attorney in a larger company, provided that the larger company demanded broad-based experience, including involvement in commercial issues and activities.
  • Must have the ability to build relationships that foster a cohesive, committed team environment and to effectively collaborate with cross-functional teams.
  • Has a strong track record of building and managing a high performing team  
  • It is imperative that the individual have excellent interpersonal skills, be articulate, direct and forthright, and be a collaborative and decisive team member and a strategic thinker with a broad perspective.
  • Strong ability to adapt to changes and to be agile.

SAFETY

This position will adhere to the Global Star Safety Program, including safety rules, practices and training as outlined in the BorgWarner Emissions Tralee Safety Policy Manual.  This individual will work in a manner that stresses the importance of preventing accidents and illnesses.  He/she must take every precaution reasonable in the given circumstance for the protection of themselves and co-workers.  In addition, he/she is responsible for reporting all injuries and/or possible dangerous situations, incidents, or occurrences to their immediate supervisor.

EEO 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.

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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