Specialist Senior Counsel: Intellectual Property

2 weeks ago

Pretoria, South Africa Natebo Consulting Full time

Our client a leading scientific and technology research organisation that researches, develops, localises and diffuses technologies to accelerate socio-economic prosperity in South Africa. The organisation’s work contributes to industrial development and supports a capable state.

About the job:
Our client has a vacancy for Specialist Senior Counsel: Intellectual Property in the Legal and Business Enablement portfolio, who will provide a full range of patent support functions, 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 for business development. The incumbent will be required to also 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. He/she will collaborate with centrally based and operational based RD&I and IP coordination across the organisation and give legal input on IP related matters, including effective management of legal, IP and contractual risks, this position is based in Pretoria.

Key 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
- 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 the complies comply 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
- Participate in various meetings (e.g. Exco, Opco, divisions meetings etc.) as requested, participate in forums and represent the company when requested
- 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)
- 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
- Familiarity with the South African National System for Innovation
- Excellent interpersonal skills
- Ability to operate and network with a wide range of individuals at different levels, both internally and externally
- Strong research and analytical skills and creative problem-solving capability
- 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.

PLEASE NOTE THAT FEEDBACK WILL BE GIVEN TO SHORTLISTED CANDIDATES ONLY

**Salary**: R40,000.00 - R60,000.00 per month

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