Senior Intellectual Property Specialist

Recruiter:

MECS Africa

Job Ref:

JHB009363/LB

Date posted:

Friday, July 1, 2022

Location:

Pretoria, South Africa

Salary:

1000000 Annually

JOB SUMMARY:
My client in research and technology is looking for a Senior Intellectual Property Specialist to join their team. The candidate will be required to provide specialised strategic and technical management of Intellectual Property (IP) to the organisation on IP related matters, including the mitigation of legal and IP related risk as well as to maximise legal rights and protection of the organisation and its’ brand.

JOB DESCRIPTION:

RESPONSIBILITIES:

Provide strategic leadership on IP management and contractual advice on IP matters for the organisation
Provide a full range of patent support functions, including patent preparation and prosecution patent portfolio development, rendering opinions, managing outside counsel, drafting and negotiating license, development and research collaboration agreements and due diligence support for business development and client counselling
Collaborate in the central invention disclosure and evaluation process and overseeing the formal process of applying for IP protection, commercialization assessments of new technology and form part of the team involved in the assessments of same
Manage and advise on all external service providers for the filing and renewal of patents and manage the budgets associated with the patent portfolio in terms of filings and renewals
Develop the skills and competencies in the IP portfolio
Handle a variety of complex IP related legal matters, give advice, initiate and/or facilitate internal and external negotiations, contribute to discussions on legal matters, draft required documentation for various research and development, commercial and other business transactions
Review IP related legal documents and provide advice on appropriate actions , provide legal opinions on a variety of requests which are complex in nature
Ensure that the company complies with the IPRPFRD Act
Co-ordinate legal matters that require external assistance, utilise organisational knowledge to brief and act as link between the organisation and external counsel
Contribute to effectiveness of the IP Portfolio
Manage relationships with internal and external stakeholders
Coach and mentor other Senior Legal Counsel and Legal Counsel on Intellectual Property by vetting work and providing guidance where requested
Remain abreast of changes in legislation and regulatory framework

QUALIFICATIONS, SKILLS AND EXPERIENCE:

A Bachelor’s degree (LLB, BProc or similar degree) with at least seven years’ relevant experience
Supporting qualification in natural or life sciences
Extensive knowledge of institutional, national and international intellectual property issues (operational, legal, regulatory and policy)
Proven track record in applying intellectual property law and the IP legal process
Understanding of the legal and regulatory framework applicable to public entities
Understanding of the R&D innovation value chain
Ability to understand technologies across a range of disciplines
Experience in drafting, reviewing, commenting on and negotiating IP license agreements
Experience working in and/or with public research organisations as an advantage
Specialist IP legal knowledge including patent preparation and prosecution, patent portfolio development, freedom-to-operate analysis, rendering opinions, managing outside counsel, drafting and negotiating license, development and research collaboration agreements and due diligence support
Sound understanding of IP legal risk and its impact on the organisation
Sound understanding of institutional R&D areas
In-depth understanding of the business operations within the research and development environment

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