London / West Sussex (with some remote working)
Full time / Permanent
Our client, a leading technology licensing company are seeking a Patent Counsel to join their IP Function.
You will report to the Chief of IP and assist with all aspects of the IP Function in the firm, working in the R&D/pilot plant facility directly alongside our brilliant inventors and engineers. The role will be varied and stimulating, involving both internal IP generation, portfolio management, IP project management and external competitor due diligence.
You will be a fully qualified EP/UK patent attorney with a background in engineering, chemistry or similar discipline and be at least 5 years PQE. You will have significant experience in an industrial IP department, preferably with some IP licensing/contractual expertise.
The Patent Counsel will be responsible for a technical area within the company. You will support the relevant IP Champions and R&D staff providing guidance on all IP matters, including setting IP strategy, IP project management within internal and external projects, managing IP generation and capture as registered and unregistered rights including instructing external counsel, and managing IP risks and opportunities within the product lifetime.
You will be part of a growing and supportive team of IP analysts, patent engineers and Legal Counsel and, if interested, can also assist the latter with contract and licensing activities. For the right individual, there will be the opportunity for advancement.
You will be able to bring:
- 5+ years post qualification experience
- 3+ years of relevant in-house IP management
- Significant prosecution/drafting experience
- IP licensing/contractual expertise
- Expertise with subscription patent & TM databases and other sources of IP intelligence
- Knowledge and experience of IP due diligence, defense and litigation processes would be an advantage
- Excellent at building strong colleague relationships, with a positive, dynamic approach to working
- Pragmatic, good judgement, curious, excellent attention to detail, innovative and openminded
- Fully qualified EP and/or UK European Patent Attorney
- Chemistry/Engineering Degree and/or PhD