Senior IP Counsel
Key information
- Publication date:03 December 2024
- Workload:100%
- Contract type:Permanent position
- Place of work:Zug
Senior IP Counsel
Zug, CH, 6300
WHO IS HOLCIM?
As a global leader in innovative and sustainable building solutions, Holcim is enabling greener cities, smarter infrastructure and improving living standards around the world. With sustainability at the core of our strategy, we are becoming a net-zero company, with our people and communities at the heart of our success. We are driving circular construction as a world leader in recycling to build more with less. It's all thanks to our 70,000 talented people around the world who are passionate about building progress for people and the planet through four business segments: Cement, Ready-Mix Concrete, Aggregates and Solutions & Products.
WHO ARE HOLCIM PEOPLE
Holcim people are passionate about finding better ways to build. They embrace innovation and improvement with a pioneering spirit. They work as trusted partners, creating better solutions and experiences for their customers,communities, and colleagues.
JOB OVERVIEW
The Senior IP Counsel is a leadership role responsible for developing and executing the company's intellectual property (IP) strategy for our Businesses in the US, Canada and Switzerland. This position ensures that the company's patents, trademarks, and other intellectual property are effectively protected and leveraged to support business objectives. The role involves a multidisciplinary approach to managing the company's global IP portfolio, mitigating risks, and fostering cross-functional collaboration across the
organisation, including product development, marketing, and legal teams.
RESPONSIBILITIES
IP Strategy Development:
? Define and implement a comprehensive IP strategy that aligns with the company's business objectives.
? Ensure the protection, enforcement, and strategic use of patents and trademarks across all regions (especially USA, Canada and Switzerland).
IP Portfolio Management:
? Oversee the development, management, and prosecution of the company's IP portfolio, including patents and trademarks.
? Work closely with outside counsel to manage the filing, prosecution, and maintenance of IP assets.
IP Risk Mitigation:
? Identify and provide strategic advice to business and technology teams regarding potential IP risks, such as infringement and competitive threats.
? Monitor the global IP landscape to ensure the company's IP strategy evolves with market and legal developments.
Litigation and Dispute Resolution:
? Lead efforts in IP-related litigation, opposition proceedings, and dispute resolution. Collaborate with external counsel to enforce the company's IP rights and defend against IP infringement claims.
IP Licensing and Strategic Collaborations:
? Develop and leverage IP through licensing opportunities, partnerships, and strategic collaborations. Negotiate IP-related agreements to support the company's business development initiatives.
Internal Collaboration and IP Awareness:
? Partner with product development, marketing, and legal teams to identify innovative technologies and ensure effective IP protection.
? Develop and lead internal IP training programs to increase IP awareness and compliance throughout the company.
Advising on Agreements and Negotiations:
? Advise on and negotiate the IP aspects of various agreements, including joint developments, LOIs (Letters of Intent), MOUs (Memorandums of Understanding), confidentiality agreements, and more.
? Work closely with the Legal, Technology, and Procurement teams on contract negotiations.
IP Due Diligence for Mergers & Acquisitions:
? Conduct IP due diligence during mergers, acquisitions, and joint ventures. Evaluate the risks, value, and opportunities of IP assets in potential transactions, ensuring smooth post-deal integration.
General:
? Demonstrate a commitment to communicating, improving and adhering to health, safety and environmental policies in all work environments and areas. Promote a culture of safety and exhibit these behaviours.
? Successful candidates must adhere to all safety protocols and proper use of approved Personal Protection Equipment(PPE), including but not limited to respirators. Employees that are required to wear respirators must be clean shaven where the respirator seal meets the face in order to pass the qualitative and quantitative fit tests
PROFILE
Education:
? Advanced degree in law, preferably a juris doctorate degree
? Qualified as a US or European Patent Attorney
? Degree in material sciences, chemical engineering, or related fields is highly desirable.
Work Experience:
? At least 8 years of experience in activities related to intellectual property, particularly patents and trademarks.
? Extensive experience in IP management, IP litigation, particularly in the United States, and IP licensing.
? Proven track record of protecting and managing multinational patent and trademark portfolios, especially in the United States and Europe.
? Technical experience in the cement, concrete, and building materials industries.
? Support for mergers and acquisition operations, including freedom to operate analyses, in the United States and/or Canada.
? Experience monitoring and supervising a network of attorneys specializing in IP and demonstrated leadership experience in managing cross-functional teams.
Knowledge, Skills and Abilities:
? Strong negotiation, communication, and strategic thinking skills.
? Ability to manage complex IP matters and foster collaboration across multiple departments and external stakeholders.
? High attention to detail with a focus on mitigating risks and enhancing the value of the company's IP assets.
Travel Requirements:
? Occasional international travel may be required to support global IP strategy and collaborate with external counsel (up to 20%).
Do you want to work in an international and dynamic working environment with attractive benefits? We are looking for colleagues to join our team to build progress for people and the planet.
Please submit your CV, a motivation letter and relevant documents with information on the career portal. No agencies can be considered.
