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Intellectual Property Counsel(005082)
4 weeks ago
Main Responsibilities:
"IP-One-Stop-Shop" per Business / R&D unit within own technical areas of responsibility:
Counselling on exploitation of global IP rights and filing strategies:
- Advise on the setting up or structuring of a patent strategy within business strategies and/or individual portfolios worldwide.
- Advise on cases in which trade secrets are the right tool for protecting your advantage in terms of innovation
Global patent analysis (FTO):
- Produce patent Freedom to Operate (FTO) opinions in relation to products, processes and uses in the context of third party property rights worldwide.
- Initiate patent report, when a plant is to be adapted or a new product is to be brought into any new market.
Globally defending and invalidating IP rights (oppositions):
- Assist Business and R&D units in the monitoring of third-party property rights and advise on the question of whether opposition or invalidity proceedings should be pursued against such a property right
- Oversee/ run opposition, appeal and invalidity proceedings as plaintiff (worldwide)
- Defend and monitor third-party patents worldwide
Globally enforcing IP:
- Lead infringement suits
Contract work (Jt.
Development- and, license agreements):
- Drafting and negotiation licensing agreements
- Drafting and negotiation joint development agreements
Handling IP in M&A transactions:
- In the context of acquisition or divestment projects by BASF, collate the necessary patent documents and reviews the corresponding contracts, prepares due diligence IP report for Commission F.
Drafting & prosecution for a Business Unit or global virtual team:
- Help to develop an application strategy domestically and abroad and check that there are no legal reasons which stand in the way of an application.
- Draft the patent applications and file them at the relevant Patent Office and prosecute with worldwide patent offices.
- Draft utility model applications for global purpose.
Trademark and domain protection:
- Advice on trademark law and management of the worldwide trademark portfolio and on creating brands and co-branding
- Drafting trademark applications worldwide
- Negotiating and drafting trademark/ logo licensing agreements
Copyright protection:
- Protecting BASF work and do Copyright infringement
- Granting licenses over BASF works
- Taking out licenses over third-party works
Design protection:
- Advising on design protection and management of the worldwide design portfolio
- Drafting applications for designs worldwide
- Negotiating and drafting design licensing agreements
Requirements:
Education
- M. SC in a technical subject, Ph.
Working Experience
- Min. 5 years in Intellectual Property area in technical area of responsibility
- Deep knowledge in technical subject and extensive professional IP knowledge (Chemical related is highly preferable)
- Patent bar in China preferred
- Legal bar preferred
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