Chief IP Counsel

2 months ago

phoenix, United States NAGRA Full time

Job Title: Chief IP Counsel

Location: Phoenix, Arizona or Cheseaux, Switzerland

Department: Legal



The Chief IP Counsel will have global responsibility for managing the Kudelski Group’s worldwide intellectual property portfolio and providing legal support for all IP-related activities, including the Group’s IP strategy, patent licensing, litigation, trademarks and standards bodies involvement. The successful candidate will work closely with the Group’s Legal and IP professionals, business unit teams, R&D leaders, engineers, sales and marketing and executive management to facilitate the development and implementation of strategies to protect and exploit the Company’s intellectual property.



Reports to: General Counsel, Head of Legal Affairs (direct report to the Group CEO)


Primary Job Responsibilities:


  • Senior member of the Legal team with overall responsibility for developing and managing the Group’s worldwide intellectual property portfolio, including patents and trademarks.
  • Manage a team of IP professionals located in Switzerland and the US as well as outside counsel based around the world.
  • Foster a culture of innovation that captures the inventiveness of the Kudelski Group and ensures development of the highest quality patents through a thoughtful, efficient patent program.
  • Oversee and direct involvement in operation of invention sessions (e.g. Blue Sky), invention disclosure selection, drafting and filing of worldwide patent applications and managing prosecution efforts -- covering the breadth of the Group’s products and services.
  • Assist with development of the Group’s overall IP strategy, taking into consideration the Group’s product and technology roadmaps, growth initiatives, strategic transactions and licensing programs.
  • Promote a creative and highly effective Inventor Recognition Program that promotes a culture of innovation, properly recognizes inventors, and encourages active participation in the patent process.
  • Supervise the team responsible for managing the Group’s trademark portfolio in close collaboration with the Group’s Marketing department and outside counsel.
  • Support IP initiatives, licensing programs, litigation and deals through patent mining, infringement and validity analysis, and patent case development, both offensively and defensively. Team member / team leader for all licensing negotiations and litigation.
  • Develop the annual patent budget, including recommendations for investment and costs savings, and manage operations to budget.
  • Educate Kudelski Group employees and leadership on IP related issues.
  • Additional responsibilities to be assigned by the General Counsel.


Core competencies:

  • Breadth of legal knowledge in the field of intellectual property: The candidate will have excellent command of worldwide intellectual property law with a particular emphasis on patent prosecution, licensing and litigation. The candidate must possess a keen intellect characterized by sharp analytical and conceptual thinking as well as excellent information seeking and processing skills. This position requires someone who is proactive and seeks to add value by skillfully applying legal knowledge to solve business issues creatively.
  • Commercial Orientation: The successful candidate will have a strong track record of completing a variety of complex transactions. The candidate will demonstrate the ability to structure and lead a team of IP professionals to effectively prosecute patents for the Company and be able to competently handle complex infringement analysis, claims, litigation and licensing negotiations with both tenacity and diplomacy. The candidate will also be able to manage operations to budget and create opportunities to minimize cost and maximize returns.
  • Team Leadership: The successful candidate must be able to operate successfully in a multi-cultural environment, working effectively with teams comprised of a broad range of business, engineering and legal professionals who are located around the world.
  • Collaboration and influencing skills: It is vital that the candidate has the proven ability to create constructive relationships with senior management and peers, being recognized as a partner and resource by all. Gaining credibility, support and involvement of key internal constituents will be critical to the candidate’s success.
  • Domain expertise and experience: A solid understanding of technologies relevant to the businesses of the Kudelski Group, including content protection and distribution, digital television, cybersecurity and IoT security.
  • Passion and professionalism: Passionate about the success of the Legal and IP function within the Group; strong interpersonal skills including the ability to develop healthy working relationships through effective listening, communication and the building of trust.
  • Organized self-starter: Well organized and energetic, a self-starter who is committed to proactively solve problems and show a passion for their work.



Experience and background:

  • The ideal candidate will possess a strong blend of legal and leadership experience. He or she will have a 10+ year track record of providing legal support in the field of patents and trademarks and has ideally worked at a major law firm prior to moving to an in-house legal role.
  • The candidate should possess the ability to oversee a worldwide patent portfolio and to support patent licensing and litigation. In this regard, a proven track record of effectively prosecuting patents in the technology sector, the ability to lead a worldwide team of patent professionals, effectively and efficiently manage outside counsel and litigation and licensing negotiations are critical requirements for the role.
  • The individual will have strong US and international experience, preferably in Europe, and be able to scale up quickly and grow in a dynamic business.
  • The candidate ideally possesses a technical degree, coupled with a JD and/or LLM from a top tier law school.
  • The successful candidate will have the ability to multi-task, assume hands-on ownership of problems and be able to judiciously use legal resources to advance the goals of the Kudelski Group.
  • Ability to manage a team of business, legal and technical professionals as well as interact with senior Kudelski management including the executive management.
  • The candidate will most likely currently be a Chief IP/Patent Counsel, or similar, for a company actively involved with patent licensing and IP monetization or a Senior Patent Counsel for a division of a large technology company.
  • Languages: Fluent English essential, French is desirable, other languages are a plus.

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