IP Counsel
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Salary Negotiable
Location Hong Kong
FULL_TIMEConsultant Johnny Hui
JobRef 1131040/001
Date posted 12 May 2022
hong-kong legal/other 2022-05-12 2022-07-11 fmcg Hong Kong HK Robert Walters https://www.robertwalters.com.hk https://www.robertwalters.com.hk/content/dam/robert-walters/global/images/logos/web-logos/square-logo.pngI am currently representing a FMCG group with global presence in looking for an IP Counsel to manage their IP Portfolio and their commercial matters. This counsel will work closely with the in-house R&D team. Candidates with engineering background will be a plus.
Key Responsibilities:
- Liaise with engineers and designers to identify and overcome potential legal and compliance risks
- Handling IP registration applications, preparing and prosecuting IP applications, supporting filing and drafting of applications (specifications, drawings, re-designing of products), handling requisitions and objections during application processes, prosecuting against third party infringement of Company IP
- Work closely with R&D, product design and product engineering teams to develop and explore IP opportunities
- Full sprectrum of IP filings, including but not limited to third party clearance searches, novelty search, infringement research, identify prior art, evaluate IP validity and registrability, assess risks
- Good grasp of IP, related procedures, collaboration agreements, license agreements, IP-related contracts
- Perform other administrative duties as requested, such as management and maintenance of IP Portfolio, centralization of IP and R&D records, corporate governance, develop and implement internal workflows
Requirements:
- Qualified lawyer with IP and general commercial exposure
- 2 to 4 years’ PQE
- Relevant experience in handling IP cases worldwide (with exposure to patents)
- Previous relevant experience in patent prosecution is an advantage but not a must
- Exposure to product engineering, technology, design or comparable industries are a plus
- Excellent command in Chinese and English
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