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.
Responsibilities
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
Qualifications
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
#LI-LJ1
Principal Counsel in London employer: Lutech Resources
As a Construction / Fabrication Engineer with us, you will thrive in a dynamic work culture that prioritises collaboration and innovation. Our commitment to employee growth is evident through continuous training opportunities and mentorship from experienced colleagues, ensuring you develop your skills while contributing to impactful projects. Located in a vibrant area, we offer a supportive environment where your contributions are valued, making it an excellent place for meaningful and rewarding employment.
