London, Greater London
Permanent, Full Time
Top In-House Role – Chief IP Counsel – International sustainable technology business
My Client is an international technology business that invests and creates new and innovative sustainable technology solutions, and they are looking for an experienced IP lawyer to run their Global IP matters.
The company wishes to create (i) a strategy for protecting its intellectual property and (ii) detailed patent applications.
The strategy will include:
- which inventions/aspects of inventions to patent, how and where to patent them;
- how to word appropriate patents/patent applications;
- which, if any, aspects of the relevant technologies/processes to protect as trade secrets (rather than patents);
- how to protect the trade secrets (practical and legal);
- how best to structure the corporate arrangements/group;
- how to address national issues (e.g. in Russia and China) and prepare for aggressive IP challenge strategies and appropriation strategies;
- how to make best use of international treaties (including BITs);
- licensing strategies and practical aspects of disclosure of inventions, technologies and processes;
- tax structuring.
The strategy is to be created and implemented by a panel of experts at the top of their respective fields including:
- advanced understanding of the relevant technology/science (including physics, chemistry and manufacturing processes);
- market leading understanding of which aspects of the relevant technology may be protected by patents and by other intellectual property rights and of existing patents/technology in the relevant areas;
- extensive experience of using existing rights and statutes to protect inventions/technology and knowledge of proposed changes in relevant law.
(It is hoped that one or two patent attorneys can be identified who have the skills in the above three bullet points.)
- experience of challenging (and defending challenges to) IP rights in major jurisdictions including the US, UK, China and Russia) and of aggressive litigation techniques.
(It is expected that one lead IP litigator with assistance from senior litigators in other jurisdictions will satisfy this skillset.)
- with experience of developing structures conducive to optimum protection of IP (including consideration of the strengths and weaknesses associated with developing IP in particular jurisdictions, registration in particular jurisdictions, and national court and IP protection systems and laws.
The company wishes to employ a person to project manage the creation of the above panel and the creation and implementation of the strategy. It is expected that the person will have at least the following experience/skills:
- a track record of project managing complex processes in the legal and/or technology development sectors;
- an understanding of corporate, commercial and IP legal issues (in the UK and US);
- an understanding of the relevant technologies (or experience which indicates an ability to understand the relevant technologies quickly);
- the ability to identify suitable candidates for the panel of experts, attract suitable candidates and
- assess the experience and skills of candidates;
- the ability to liaise with the technology team and management of the company.
For more information, contact Miriam.Warburton@eximius.com or 0207 648 6954.
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Sustainable technology, Intellectual Property