Senior Counsel – Patent Litigation, Offensive Strategy

Role Overview

• Providing expert legal counsel to lead, support and implement Group Patent legal strategy to advise business decisions and maximise commercial opportunities, whilst ensuring legal compliance and mitigating business risk
• Responsible for managing global strategic patent litigation brought by or against the Group and to proactively identify and manage strategic patent litigation risks and develop defence strategies in anticipation of future strategic litigation on behalf of the Group
• Responsible for overseeing day to day patent management of the BAT/PMI Settlement Agreement
• Responsible for leading the team undertaking counter FTO work: identification of patent rights that are infringed by third party products and designing effective prosecution and litigation strategies to improve the commercial value of these patent rights (Patent Chess)
• Oversee and supervise patent litigation matters worldwide, including arbitration actions arising from the BAT/PMI Patent Settlement Agreement
• Coordinate litigation efforts with (a) external law firms world-wide (b) external patent attorney firms and (c) the business end-markets involved, to ensure: consistency of approach in litigation strategies; efficiency of effort in litigation preparation; and avoidance of duplication of effort
• Provide commercially focussed updates and advice on key issues in a straightforward and compelling way directly to senior management, enabling the business to deliver results whilst managing legal risk
• Oversee and direct global strategic prosecution of the Group’s patent portfolio with the counter-FTO team, where litigation is ongoing, may be in anticipation or if commercial levers may be required for other purposes
• Lead the C-FTO team (Patent Chess) to identify levers to be deployed in commercial strategy
• Where leading these litigation services: manage the provision of external support; drive performance in the resolution of contentious issues; and co-ordinate the development of strategies in line with the Group’s commercial strategy
• Develop and manage relationships with key external IP service providers to ensure high quality, efficient and value for money service, seeking efficiencies and opportunities for standardisation where possible
• Cultivate a network of collaborative relationships at all levels within BAT which are based on mutual trust to ensure the best outcome for BAT as whole, and contribute to the education of colleagues outside of the patent group on patent matters
• Promote risk management and compliance culture ensuring consistency in application of IP policies and procedures on a global level within BAT

Requirements

• Significant previous experience of managing strategic patent litigation matters worldwide
• Commercially astute, ideally with an understanding of FMCG businesses, and proven ability to understand and support strategic aims
• Proven ability to manage and lead a team including external lawyers and patent attorneys
• Proven ability to develop strategies to drive commercial value from the patent portfolio and to lead a team focused on identifying levers to support these strategies
• Outstanding ability to assimilate and undertake high level strategic analysis of complex legal and business issues in line with overall business strategy
• Detailed knowledge and practical experience of patent law and litigation in key markets (at least Europe, and ideally also US, and Japan)
• Ability to understand technical patent applications involving mechanics, physics and chemistry, and lead discussions with scientists
• Ability to draft settlement agreements and licenses and assess IP clauses in other commercial agreements, with considerable attention to detail, accuracy and consequences
• Ability to manage resources in line with set requirements
• Ability to manage priorities and meet commitments with a track record of successfully completing projects
• Ability to work across functions, building consensus and support
• Professionally qualified as a European and UK patent attorney with extensive patent litigation experience or a qualified lawyer with extensive experience in patent matters and would usually have at least 10 years’ post qualification experience in the Patents field (in any of the mechanical, electrical engineering or chemical fields), including FTO assessments, contentious and non-contentious matters including experience managing multi-jurisdictional strategic patent litigation matters.

Benefits

• market leading annual performance bonus (subject to eligibility)
• diverse health plans
• initiatives for work-life balance
• transportation support
• flexible holiday plan with additional incentives