Job Description

Intellectual Property Counsel

Location: EMEA, United Kingdom, London

Ref: DETECTIONEMEA01432

Division: Smiths Detection

Job Function: Legal and Compliance



We have a superb opportunity for an experienced Intellectual Property Counsel to join our Legal team on a permanent basis. The position could be hybrid working with base office in either London or Hemel Hempstead.

Reporting to the Chief Intellectual Property & Digital Counsel, your primary purpose will be to provide intellectual property counsel and support to our Research & Development teams located in the US, Europe, China, and India and protect the company\'s intellectual property worldwide. You will also manage patent filing and prosecution, conduct freedom to operate studies in support of new product development, and support collaboration and joint development activities with third parties.

Our team will look for you to display a real passion for everything relating to intellectual property but also for you to demonstrate a skill for working collaboratively with a variety of stakeholders.

We are a highly collaborative, friendly, and encouraging team working closely with our business on projects which lie at the heart of the Group\'s strategy. This role will give proactive, enabling advice to business stakeholders and to the Legal Community by operating as a functional specialist.

It is also important to note, you\'ll be joining a team of experts, who are focused on adding real value to every aspect of our intellectual property. You will have lots of opportunity for involvement, exposure to exciting projects and opportunity to forge collaborative relationships across the organisation. You will also have a great opportunity to advance within a global FTSE 100 company where career development is written into our DNA.

Duties & Responsibilities

• Counsel business on a range of intellectual property issues.
• Invention mining and identifying potentially patentable subject matter in discussions with engineers.
• Manage all aspects of patent filing and prosecution including review of invention disclosure forms, filing patent applications, and drafting or reviewing draft responses to office actions.
• Review of patent portfolio and mapping to products.
• Manage periodic review of patent portfolio and payment of annuities or discontinuance of patents.
• Be an integral part of the new product development process, conduct freedom to operate checks and provide guidance to technology teams throughout the product lifecycle process on various IP and legal issues.
• Support compliance with legal obligations concerning the use of Open-Source Software (\xe2\x80\x9cOSS\xe2\x80\x9d).
• Review, draft and negotiate IP focused agreements including IP licences and assignments, non-disclosure agreements, R&D agreements, technology transfer agreements and IP provisions in various commercial contracts.
• Provide support to other lawyers in Smiths Group Legal on IP matters.
• Assist in trademark clearance searches, filing of trademark applications, and renewals.
• Review and processing of IP related documents requiring signatures (POAs, Statements of Use, declarations).
• Assist with Legal & Business Affairs department projects as required.

Diversity & Inclusion

We believe that different perspectives and backgrounds are what make a company flourish. All qualified applicants will receive equal consideration for employment regardless of race, color, religion, sex, sexual orientation, gender identity, national origin, economic status, disability, age, or any other legally protected characteristics. We are proud to be an inclusive company with values grounded in equality and ethics, where we celebrate, support, and embrace diversity.

The Individual

Essential:

• Qualified Patent Attorney or Solicitor with at least 3-5 years\' post qualification experience in patent filing and prosecution, freedom to operate and IP transactional work.
• Ability to work effectively under time and workload pressure.
• Able to build good working relationships with colleagues and stakeholders
• Able to work effectively without close daily supervision.
• Thoroughness, reliability and determination to see a project or task through to final delivery and completion.

Desirable:

• Degree in electrical and electronics engineering or similar.
• Experience supporting the growth of a digital business including Proof of Concept and SaaS subscription agreements and software licence agreements
• Knowledge of Legal Tracker billing system and Ipendo IP Management System.

About Smiths

At Smiths we apply leading-edge technology to design, manufacture and deliver market-leading innovative solutions that meet our customers\' evolving needs, and touch the lives of millions of people every day. We are a FTSE100, global business of around 14,600 colleagues, based in 50+ countries. Our solutions have a real impact on lives across the planet, enabling industry, improving healthcare, enhancing security, advancing connectivity and supporting new homes. Our products and services are often critical to our customers\' operations, while our proprietary technology and high service levels help create competitive advantage. We welcome colleagues with a curious mind, who are happy with responsibility, enjoy a challenge and are attracted by the idea of working at a business with a 170+ year history of innovation, and five global divisions, all experts in their field.

About Smiths Detection

Smiths Detection is a global leader in detection and screening technologies for the protection of people and assets, supporting safety, security and freedom of movement in today\'s world.

Smiths Group