- Provide day-to-day legal advice to address patent, design, copyright, trademark, and other IP-related needs of Multimatic's global operations.
- Ensuring that patentable inventions are recognized and protected.
- Drafting, negotiating, interpreting and advising on IP-related agreements, including IP provisions in commercial agreements, such as manufacturing agreements and supply agreements.
- Working with external counsel to provide support on a range of IP matters including, but not limited to, IP protection (by way of registration or non-registration approaches), IP enforcement and freedom to operate searches for Canada and other jurisdictions around the world.
- Evaluating inventions to determine patentability and drafting, filing and prosecuting patent applications before the CIPO, USPTO and other foreign counterparts.
- Provide IP support for strategic initiatives, including mergers and acquisitions (M&A) and other strategic projects.
- Perform other general legal duties and functions as may be assigned or required by business needs.
- Law degree (JD or LLB) with a minimum of 5 years of legal experience in intellectual property, in private practice or a combination of private practice and in-house counsel.
- Excellent skills in drafting and editing legal documents.
- Experience in preparation and prosecution of patent applications.
- Experience in working with inventors to prepare invention disclosures in PowerPoint or equivalent.
- Experience conducting IP due diligence.
- Strong analytical and problem-solving skills.
- Ability to work well under pressure, prioritize effectively and handle multiple deadlines.
- Ability to deal effectively with external legal counsel.
- Active membership in good standing with the Law Society of Ontario.
- Onsite position
Senior Counsel – Intellectual Property - Markham, Canada - Multimatic Inc.
Description
Senior Counsel – Intellectual Property
Location: Multimatic Inc., Markham, Ontario, Canada
Posted: April 5th, 2024
Multimatic is a privately held, global enterprise supplying engineered components, systems and services to the automotive industry. The company's core competencies include the engineering and manufacturing of complex mechanisms, body hardware, suspension systems and body structures, as well as the design and development of lightweight composite automotive systems. Multimatic also assembles complete niche vehicles such as the Ford GT, Ford GTD and Mercedes – AMG One and is involved in automotive racing through Multimatic Motorsports. Headquartered in Markham, Ontario, Multimatic has manufacturing facilities and engineering centers in North America, Europe and Asia, and alliance relationships with partners around the world. We currently employ approximately 5,300 people.
POSITION SUMMARY
The Senior Counsel - Intellectual Property is a newly created role. Reporting to the Vice President, Patent Counsel with dotted line reporting to the Vice President and General Counsel, the Senior Counsel - Intellectual Property will provide strategic and legal services and advice related to intellectual property and intellectual property-related matters to Multimatic's global operations. The successful candidate will work closely with the Vice President and Chief Technical Officer, Multimatic Engineering and have frequent interaction with the other lawyers in the legal department along with outside counsel and counsel for agencies providing services to Multimatic.
This is an exciting opportunity to work in a successful Canadian-based company along side a highly talented and experienced intellectual property lawyer with decades of experience in a top-tier Bay Street firm. The ideal candidate is a self-starter with exceptional business judgment who can work independently, as we expect the candidate will assume responsibility for the company's entire intellectual property portfolio in the future.
The role is based at Multimatic's corporate offices in Markham, Ontario.
KEY RESPONSIBILITIES
IDEAL EXPERIENCE
WORKING ENVIRONMENT
Closing date for applications is April 26th 2024