IP Counsel

I 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