Senior Patent Counsel (m/f/d)

Location
Frankfurt am Main
Workplace
Hybrid

About this role

Job ID: 41680  |  Location: Frankfurt, Hesse, Germany | Work Model: Hybrid 

 

As Senior Patent Counsel (m/f/d), you will generate value from IP (Intellectual Property) assets and advise clients up to Business Unit Leadership Team level on IP matters. You will represent Clariant before the European Patent Office, lead major IP litigation and licensing cases, and drive IP strategy and patent portfolio management. You will work as part of an international team of IP professionals within Clariant Global Function Legal.

 


Responsibilities

  • Ensure registration, enforcement and defense of technical IP rights worldwide.
  • Ensure opposing patent rights of third parties for the purpose of securing technical and economic freedom to operate for the company, lead post-grant procedures and represent, in written and oral hearings, before the European Patent Office.
  • Perform analysis, lead major investigations and provide legal opinions regarding infringement, freedom-to-operate and validity.
  • Manage and support IP related litigations.
  • Draft contracts with technical and / or scientific background.
  • Lead IP licensing cases and IP-related activities in M&A projects.
  • Drive the IP strategy in line specifically with Business Unit Care Chemicals.
  • Ensure compliance in all IP-related issues and actions.
  • Ensure the processing of all questions relating to inventor remuneration.
  • Coach IP Counsels on patent, opposition and contract matters.
  • Develop training materials and concepts to foster IP awareness and educate Business Unit staff and other relevant stakeholders.

 

Requirements

  • Degree in Chemistry, Biochemistry or other relevant technology or science field, preferred Master/PhD.
  • Qualified European Patent Attorney (passed all EU Patent Law exams).
  • 5+ years of post IP attorney qualification and relevant IP experience in business or technology area.
  • Long term experience and deep understanding of patent laws and procedures.
  • Ability to provide strategic advice on how IP can be leveraged to generate value.
  • Fast understanding of business and technology environment of client (Business Unit/Business Lines/Region) and ability to use this to develop, negotiate and litigate optimal solutions in complex IP matters.
  • Understanding of complex contract law allowing drafting and negotiating complex IP contracts.
  • Understanding of IP court practice and procedure.
  • Fluent in English, German would be an advantage.

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