Senior Patent Counsel — SICPA SA

Full description

The primary objective of this role is to ensure that technology identification, extraction and protection are aligned with the business activities in the field of chemistry. A strong understanding of the underlying technologies and their commercial applications is therefore essential to success in this position.

The in-house Patent Attorney will act as a hands-on partner to the business, advising on day-to-day business development opportunities and ensuring that new innovations are effectively identified and protected through patents. Working closely with the Research & Innovation (R&I) team and the IP department, the role will focus on innovation extraction, patent drafting and prosecution.

The role requires a proactive, collaborative approach, working across R&I, Commercial and Legal teams to ensure that intellectual property protection supports the company's broader business objectives. The ability to translate complex technical concepts into clear, concise messages and communicate effectively with stakeholders at all levels is essential.

Key responsibilities

• Work closely with the Research & Innovation team, harvest and capture innovation. Pro-actively look for inventions and create and maintain awareness about use and necessity of patent applications.
• Contribute to the acquisition, protection, defence and enforcement (drafting, filing, prosecution, opposition, appeal, etc.) of patent rights; prosecution of a global patent portfolio in the assigned technical areas.
• Provide comprehensive patent support to selected projects as an integral member of multidisciplinary project teams.
• Formulate strategic practice recommendations in response to commercial, legal and technical developments, this includes evaluating patent validity, patent risk management and infringement issues and reviewing IP-related agreements.

Essential duties

• Analysis of the innovation and potential inventions, drafting, filing of patent applications and worldwide prosecution; therefore, drafting skills are essential here and prosecution, opposition and infringement matters offer a wide variety of work.
• Liaise prior art search reports from external providers and assess feasibility and patentability.
• Draft IP related aspects of agreements with third-party collaborators and service providers.
• Oversee patent risk management and provide Freedom to Operate opinion and clearance studies.
• Working closely with R&I division, sales and legal and promote patent culture with good visibility within the company. The direct contact with international colleagues and clients will require commitment, passion, strong communication skills and commercial savviness.

Profile

• PhD (preferred) or master’s degree in chemistry.
• Be passionate about the technology you work with and follow the developments within the industry with invested interest.
• Qualified European Patent Attorney. Minimum 3 years of relevant work experience in drafting and prosecuting patent cases after EPA qualification.
• Proactive, structured with a collaborative working style with solid team player attributes with the ability to manage relationships with different stakeholders in the company.
• Possess strong communication and interpersonal skills to work with cross-functional teams across departments and divisions.
• Show flexibility under stress and delivers quality work with strong attention to detail in an autonomous manner.
• Fluent in English, French a strong asset is a plus

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