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Senior IP Counsel

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Date: May 13, 2021

Location: Amsterdam, NL

Company: AkzoNobel

AkzoNobel has a passion for paint. We're experts in the proud craft of making paints and coatings, setting the standard in color and protection since 1792. Our world class portfolio of brands - including Dulux, International, Sikkens and Interpon - is trusted by customers around the globe. Headquartered in the Netherlands, we are active in over 150 countries and employ around 34,500 talented people who are passionate about delivering the high-performance products and services our customers expect.

Job Purpose

The main objective of the Senior IP Counsel is to work with business colleagues worldwide to exploit IP opportunities, mitigate IP risks and establishing collaborative agreements with third parties. The focus of the job will be on negotiating and drafting IP agreements and handling trademarks and copyright matters. The IP Counsel must have command of IP laws and drafting skills and use their knowledge to help our businesses achieve their goals with clear practical advice while minimizing legal risk. 

 

The Senior IP Counsel reports to the Director IP and is supported by a team of paralegals and an administrative department.

 


 

Key Accountabilities

 

  • Draft and negotiate IP agreements, including joint development agreements and license agreements; supporting IP aspects of M&A transactions;
  • Proactively manage part of the company’s trademark, design and domain name portfolio; 
  • The assessment, prosecution and protection of new brands and marketing materials;
  • Mitigate risk; monitor third party brands, manage trademark oppositions and enforce trademark rights; 
  • Educate business colleagues on intellectual property risks and opportunities;
  • Managing outside counsel in the above areas.

 

Key Activities

 

The Senior IP Counsel must provide accurate and practical advice to marketing and technical colleagues in the businesses on how to exploit IP opportunities, mitigate IP risks and establishing collaborative agreements with third parties. The Senior IP Counsel will have to distill complex technical and commercial information, in some case review that together with the Patent Attorneys, and combine that into a clearly worded and solid contract. 


Since IP Strategy has to be aligned with business strategy, it is ultimately the business leaders deciding whether to follow the advice of the IP counsel. Once a decision is made, the Senior IP Counsel defines how the IP strategy/plan is implemented and specific IP actions to be taken. 


Governance for decisions relating to high exposure cases (such as IP litigation and acquisitions) is set out in the AkzoNobel Authority Schedule. Once the go/no-go decision is made, the Senior IP Counsel advises and defines how the decision is implemented and the necessary IP actions to be taken. 


Collaboration and consultation with other members of the IP team and the wider AkzoNobel legal group is essential. 

Experience

 

  • Master of Law, with emphasis on contract law and intellectual property;
  • At least 8 years of relevant working experience at a law firm or a multi-national corporation;
  • Solid knowledge of contract law and experience with drafting, reviewing and negotiating a wide range of IP agreements (e.g. license agreements, joint development agreements, confidentiality agreements, co-existence agreements);
  • First rate knowledge of intellectual property laws, in particular trademark and copyright laws;
  • Top-level analytical, counseling, negotiating, communication and interpersonal skills with sound legal and ethical judgment;
  • The ability to work as a team member across the region and the world;
  • Fluent in English (both written and spoken).

 

Application details

 

We welcome your online application, reference 10144. Please note that applications sent by mail will not be considered. If you have any question, please feel free to contact our Talent Resourcing Partner Jeroen Sevenstern phone +31 (0)6 51706499.

 

An employment screening may be part of the selection process.

 

Agency or sales calls are not appreciated

 

All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, age or disability.

Requisition ID: 10144