The Assistant General Counsel – Intellectual Property will play a leadership role in co-developing and implementing IP strategy and will lead activities related to cultivating and protecting new innovations, researching patent filings, monitoring competitors’ IP, and maintaining clearance from third party IP. This position will globally support IP litigation, M&A due diligence, and IP agreement review, negotiation, and drafting.

This position requires a self-directed and strongly motivated individual who will learn the unique aspects of our company and our industry. This will allow a business based approach in providing counsel on IP related risks and in providing clear guidance on appropriately managing those risks. The person must work toward implementing processes to improve efficiency and to improve capabilities in managing IP in a cost efficient manner.

The position requires communicating and presenting to senior management, outside counsel, opposing counsel, and engineering teams in order to implement the overall IP strategy.

Job Responsibilities:

•Chair committees tasked with making invention filing decisions and provide the committees information on cost, patentability, and business impact to enable informed filing decisions

•Work with engineers to stimulate proactive innovation through structured processes / problem solving exercises

•Utilize software tools to perform patent searches and analysis

•Lead enforcement investigations of company’s patents against competitor’s products

•Draft notice letters and negotiate with infringers/licensees

•Manage outside counsel in formal freedom-to-practice opinions (as required)

•Advise engineering and business unit management on general patent and innovation matters

•Oversee outside counsel preparing and prosecuting patents

•Coordinate patent prosecution strategy with outside counsel and with engineering management

•Conduct design review sessions to identify patentable features of new products

•Work closely with and direct the IP Paralegal in tracking and maintaining the patent portfolio database within the company and to draft, review and negotiate non-disclosure agreements

•Collaborate with business units to set IP budget that meets business unit’s goals and support tracking of IP related spend against the budget

•Co-develop IP strategy with Chief IP Counsel and with product strategy and business unit functions

•Train internal clients on aspects of IP law and confidential information relevant to their position

•Provide support on IP litigation and on IP and technical aspects of due diligence activities as needed

•Negotiate, review and draft technology license agreements, development agreements, and related IP agreements and support commercial transaction attorneys in negotiating, reviewing, and drafting IP terms in commercial agreements.

JOB REQUIREMENTS

QUALIFICATIONS

• Engineering degree required.

• J.D. degree from an accredited law school required

• Minimum of 5 years IP related legal experience (prefer some experience at law firm as a part of the 5 years of experience)

• Admission to and good standing with a state bar required.

• Admission to practice before US Patent Office required.

• Experience working with electric and mechanical vehicle systems and vehicle controls software

• Experience in drafting and prosecuting patent applications

Meritor is an Equal Opportunity/Affirmative Action employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability, or protected veteran status.