Principal Counsel
Edsv Cx_1 · Chiswick, London, United Kingdom
Job Overview:
The Principal Counsel is responsible for interpreting internal or external business issues and recommending best practices. They will be tasked with solving complex Counsel-related problems and will work independently with minimal guidance. The Principal Counsel may be responsible for leading functional teams or projects and is regarded as a specialist in the field of Counsel. As such, they must have in-depth expertise in Counsel as well as broad knowledge of the Counsel discipline within the Legal function.
Key Tasks and Responsibilities:
- Develop and maintain an understanding of the business and technology of the assigned business unit(s), as well as associated patent portfolios
- Identify Intellectual Property (IP) risks to assigned business units and manage them in collaboration with the Senior Director/Chief IP Counsel
- Negotiate and draft IP-related contracts such as NDAs, technical service agreements, and licenses
- Review and advise the company on IP-related risks in complex, high-value transactions
- Lead patent committee meetings for assigned portfolios
- Efficient exercise of control over outside counsel to minimize external costs
- Assist inventors with the writing and submittal of invention disclosures
- Instruct inventors on legal requirements for a patentable invention
- Advise inventors on data and other information needed to increase the patentability of inventions
- Critically review and evaluate submitted invention disclosures
- Perform and evaluate patentability searches
- Provide support for freedom-to-operate assessments and IP enforcement matters
- Maintain expertise in patent laws/regulations and general knowledge of patent laws in at least some foreign jurisdictions
- Prosecute patent applications and/or manage outside counsel on the prosecution of patent applications
Essential Qualifications and Education:
- Bachelor's degree in Chemical Engineering, Petroleum Engineering, Chemistry, or similar
- Advanced science degree desirable
- Bar registration; registered to practice law
- 4 to 6 years of law firm experience drafting and prosecuting patent applications and managing global patent portfolios; ability to independently prepare and prosecute patent applications
- Thorough understanding of Patent Cooperation Treaty patent laws/regulations and good knowledge of at least some foreign patent laws and practices
- Some experience in drafting IP-related contracts along with a desire to expand upon existing experience
- Excellent written and oral communication skills, including the ability to effectively communicate with business leaders
- Outstanding analytical skills with a reliable eye for quality and detail
- Ability to manage priorities and deadlines in a fast-paced environment with myriad business pressures
- Ability to think beyond the rules of patent filings and prosecution and focus on the practicalities and context of business needs
- Ability to work well within a team, taking direction and providing leadership as needed
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