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Chief IP Counsel
1 month ago
Location: Phoenix, Arizona or Cheseaux, Switzerland
Department: Legal
Job SummaryThe 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.
Key Responsibilities- Develop and manage 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, invention disclosure selection, drafting and filing of worldwide patent applications, and managing prosecution efforts.
- 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.
- 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.
- Breadth of legal knowledge in the field of intellectual property, with a particular emphasis on patent prosecution, licensing, and litigation.
- Commercial orientation, with a strong track record of completing complex transactions.
- Team leadership, with the ability to operate successfully in a multi-cultural environment and work effectively with teams comprised of a broad range of business, engineering, and legal professionals.
- Collaboration and influencing skills, with the ability to create constructive relationships with senior management and peers.
- Domain expertise and experience, with 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, with a passion for the success of the Legal and IP function within the Group, strong interpersonal skills, and the ability to develop healthy working relationships through effective listening, communication, and the building of trust.
- Organized self-starter, with the ability to proactively solve problems and show a passion for their work.
- A strong blend of legal and leadership experience, with a 10+ year track record of providing legal support in the field of patents and trademarks.
- Experience working at a major law firm prior to moving to an in-house legal role, with a proven track record of effectively prosecuting patents in the technology sector, leading a worldwide team of patent professionals, and managing outside counsel and litigation and licensing negotiations.
- Strong US and international experience, preferably in Europe, with the ability to scale up quickly and grow in a dynamic business.
- A technical degree, coupled with a JD and/or LLM from a top-tier law school.
- The ability to multi-task, assume hands-on ownership of problems, and judiciously use legal resources to advance the goals of the Kudelski Group.
- The ability to manage a team of business, legal, and technical professionals, as well as interact with senior Kudelski management, including the executive management.
- Fluent English essential, French is desirable, other languages are a plus.
