Legal Advisor (Patent Laywer) in London

Location: Aberdeen, Birmingham, Bristol, Cambridge, Cardiff, Edinburgh, Glasgow, Leeds, London, Manchester, Milton Keynes, Newcastle upon Tyne, Nottingham, Plymouth, Reading, South Coast - Southampton, Watford

Capability: International

Experience Level: Manager

Type: Full Time

Service Line: International

Contract type: Permanent

About KPMG International

Together with more than 273,000 colleagues in 143 countries throughout our member firms, people at KPMG imagine big ideas and bring solutions to life for clients both big and small. A role with KPMG International will open a world of opportunity in your career.

KPMG International helps set the strategy and protects the reputation of this global organization of independent professional services firms providing Audit, Tax and Advisory services. We deliver value to our member firms and drive positive change in the communities we serve. By joining us you will gain a unique understanding of how a global organization operates and work on projects that impact the whole organization.

About This Team

The International Office of the General Counsel (IOGC) is a growing and high‐performing in‐house legal team with personnel based in five countries. The team provides legal advice on a wide variety of key strategic matters and legal, regulatory and reputational issues and risks, and also supports the execution of critical business decisions made by KPMG International.

Role Summary

KPMG is now a digital business, and as a result, technology enables everything it does and requires KPMG to continue to transform with technology in support of its Growth and Trust agenda. This role, which is focused on the product and innovation aspects of Intellectual Property (IP), Technology and Data, is a part of the International Office of the General Counsel (IOGC). It focuses on providing legal advice and support from IOGC on the development, protection, enforcement, acquisition and licensing of technology, software and data, particularly risks, protections and opportunities related to the patent aspects of KPMG's IP, technology and data strategy.

Although this role is primarily focused on product and innovation, this role may also involve providing support to other IOGC lawyers on strategic initiatives and commercial technology transactions, particularly where the licensed technology is protected by patents, is not patent protected but is in a highly patented field, and/or leverages artificial intelligence and blockchain.

The person in this role will execute their responsibilities under the overall supervision of, and working collaboratively with, the most senior patent lawyer with respect to IP, Technology and Data and other senior lawyers focused on IP and technology law. This role requires a person to provide meaningful value‐add to business and technology development teams by supporting product and innovation that contributes to over $17 billion in annual revenue, helping to analyse KPMG International's intellectual property (IP) and technology assets, and advising on patent protection and IP enforcement, all while supporting IOGC's senior leadership team in managing, mitigating and preventing legal and reputational risk.

The role is an excellent opportunity for a junior lawyer who has focused on patent work (prosecution, litigation, licensing, freedom to operate) to apply their skills to a rapidly growing international patent pipeline focused on emerging technologies and to expand their IP skillsets beyond patent law in a rapidly growing digital business.

Key Accountabilities

• Intellectual Property (IP) Protection & Monetization Program: Support the most senior patent lawyer within IOGC in working with KPMG International business teams and technology developers to identify proprietary assets developed by them, determine the best legal methods to protect such IP assets, and execute processes for such protection.
• Support the most senior patent lawyer within IOGC with patent application filings in the UK Intellectual Property Office and European Patent Office and working with, instructing and managing external counsel for patent application filings outside of those jurisdictions.
• Support the most senior patent lawyer within IOGC by working with global business teams to identify third parties that may be infringing on KPMG International IP and to enforce KPMG International's rights in its IP, as well as understanding the potential for member firms to license and monetize such IP rights.
• Support the most senior patent lawyer within IOGC by connecting patent protection to marketing and selling patent‐protected technology solutions.
• Intellectual Property & Technology Advice and Analysis: Support the most senior patent attorney within IOGC in understanding the technical aspects of, and business plan for, KPMG‐developed technology solutions, and support more senior lawyers in counselling on freedom to operate, intellectual property enforcement, and copyright versus patent versus trade secret protection.
• Support the most senior patent lawyer within IOGC in analysing and advising on whether KPMG International's use of third‐party emerging technology may infringe on third parties' patent rights, and assessing the strength of third‐party patents.
• Support more senior attorneys in the provision of legal advice on the implementation of AI in KPMG International technology solutions, including in respect of compliance with applicable law and regulations, data rights, IP rights, and internal processes to ensure compliance with the Trusted AI framework and principles.
• Technology Legal Rights Assessments: Assess whether KPMG International has proper IP and data rights to license and/or provide member firms and their clients with use and/or access rights to KPMG International technology solutions.
• Collaboration with Other KPMG International and Member Firm Professionals: Work collaboratively with Global professionals in technology and software development, technology architecture and infrastructure, risk management, clients and markets, procurement, and branding and marketing, as well as other intellectual property, technology and data lawyers within KPMG member firms in major jurisdictions.
• Training & Education: Support more senior lawyers in preparing and providing training and education to KPMG International professionals on how to strategically consider protecting KPMG International IP and avoiding misuse of third‐party IP.

Experience & Knowledge

• Mid‐level qualified lawyer advising on IP and technology law, including patent practice before the UK Intellectual Property Office and European Patent Office and freedom‐to‐operate analysis.
• Must possess a proficient working knowledge of both on‐premises and cloud‐based information technology businesses, services, and products.
• Must possess a proficient working knowledge of IP and technology law issues that arise in IP portfolios, technology solutions and business operations that span multiple jurisdictions with varied laws and levels of enforcement.
• Experience in taking the day‐to‐day lead with minimal supervision on less complex/less strategically significant matters.
• Under overall supervision of a more senior lawyer, experience in taking accountability for, and driving forward, aspects of matters that deal with the implementation of, solutions to complex issues and matters with an international/cross‐border dimension.
• Experience in quickly absorbing and processing a large amount of information in respect of complex issues with minimal supervision.
• Ability to manage and prioritize a large volume of matters with competing deadlines and different internal stakeholders.
• Some knowledge and developing awareness of global business, geopolitical, legal, regulatory and technology issues/trends which may be relevant to KPMG and the Audit & Accounting profession more broadly.
• Experience in working on cross‐border matters and well‐developed cultural sensitivity to enable engagement with people at all levels and with diverse backgrounds.

Technical Skills, Abilities & Qualifications

• UK qualified lawyer (or equivalent if qualified outside of the UK).
• European Patent Attorney.
• UK Chartered Patent Attorney.
• Intellectual Property, Technology & Data.
• Proficient technical legal skills in the areas of IP and technology law, with a focus on the protection and enforcement of IP rights, particularly for patents, copyrightable software and trade secrets.
• Some experience negotiating and drafting skills across a wide variety of technology and IP agreements and transaction structures across various jurisdictions.
• Proficient skills advising on protecting and enforcing IP and technology rights, artificial intelligence platforms and models, and data and analytics.
• Experience advising on trademark matters and blockchain is beneficial.
• Well‐developed legal drafting skills.
• Well‐developed communication skills to enable the translation of complex legal and regulatory issues in their practice area into easily understandable advice.
• Developing communication skills to enable the translation of complex legal and regulatory issues, within the context of complex technical and business issues, into easily understandable advice.
• Some experience in negotiation.

Agile/Flexible Working

At KPMG International, we are supportive of helping you to achieve a balance between your home and work demands. We are happy to discuss individual requirements and our range of flexible working arrangements could be of interest.

KPMG International's commitment to inclusion & diversity

At KPMG International, we recognise that we need inclusion and diversity to be successful. We want to attract, retain and develop diverse talent at all levels.

Applying with a disability

KPMG International is proud to be an inclusive place to work and we are committed to ensuring that you are treated fairly throughout our recruitment process.