This position is responsible for supporting TRW Vehicle Safety Systems Inc. and other Occupant Safety Systems (OSS) North America legal entities in connection with Intellectual Property Rights (IPR) issues, including obtaining and maintaining TRW's IPR and helping to ensure that TRW's products avoid the valid patents of others. This position is also responsible for supporting the global OSS Law function by providing advice on United States laws relating to IPR and assistance with United States litigation relating to IPR.
Job Duties:
Major job duties fall into four main categories: Infringement Avoidance/Claims (40%), Technology-Related Agreements (20%), Patent Procurement (20%), and Client Counseling (20%). Please refer to details listed below:
- Infringement Avoidance/Claims – Work with engineering to understand TRW products in serial production, proposed for production and/or within TRW's strategic product plan. Search for and analyze or manage outside counsel in searching for and analyzing patents that are potentially relevant to TRW's products. Provide guidance to engineering and operations management regarding potential infringement issues. Work with engineering to help design around competitor patents, where possible. Manage outside patent counsel in investigating the validity of the patents of others that may potentially be relevant to TRW's products. With in-house litigation counsel, help to manage outside counsel in patent infringement actions in the United States.
- Technology-Related Agreements – Work with engineering, business development, purchasing and sales functions at all levels in TRW Occupant Safety Systems in North America and with TRW in-house legal generalists and specialists (such as Tax) to develop TRW's position with respect to potential licensees, licensors, suppliers of products and product development services, and customers in all contractual areas in which creation, ownership, use and/or confidentiality of intellectual property is at issue. Review and draft (or help draft) and/or negotiate (or help negotiate) agreements or portions of agreements relating to such matters.
- Patent Procurement – Perform prior art searches to assess the patentability of in-house inventions. Review invention disclosures formally and informally with engineering management and act as chair of and/or participate in invention review meetings to decide whether and where (a) to file patent applications within budget constraints and pursuant to TRW's current business and product strategy and (b) to maintain existing patents and patent applications. Manage and review the work of outside counsel in drafting patent applications, prosecuting patent applications, and filing and defending against opposition proceedings.
- Client Counseling – Advise personnel in engineering, business development, and other functions regarding intellectual property issues. Educate TRW personnel in engineering and other functions regarding intellectual property risks and rewards, basic law regarding intellectual property, TRW processes and procedures regarding intellectual property, and the obligations of employees regarding intellectual property. Review technical papers and advertising materials prior to publication.
Requirements & Qualifications:
This position requires admission to practice law in at least one state as well as admission to practice before the U.S. Patent and Trademark Office. Excellent oral/written communication skills are required in addition to patent prosecution and opinion writing experience. 2-5 years job-related experience is required.
Prior experience with licensing or other technology-related agreements is desired. Litigation experience, experience in the automotive industry, a law firm and in a corporate work environment preferred.
Educational Requirements:
A Bachelor's Degree in Engineering or Science is required. A Juris Doctorate Degree is required.
Additional Info:
Employer Type: Large Corporation
Job Location: Washington, Michigan
Contact:
Please submit resumes to: Recruiter1@trw.com.