Senior IP Lawyer

Role overview

Our client is a major Abu Dhabi-headquartered technology group with a substantial portfolio of operating companies. Intellectual property generated across those businesses currently sits with the individual companies that created it, and the group is moving it into central ownership at headquarters. They are looking to hire an IP Counsel to lead that consolidation on site in Abu Dhabi. The successful candidate will establish chain of title across the portfolio, handle the assignments and recordals, put the inter-company licensing in place, and then act as intellectual property adviser to the business. This is a strong opportunity to build a group IP function and its governance from the beginning.

Key responsibilities

• Establish chain of title to patents, trade marks, designs, copyright and know-how held across the operating companies
• Identify ownership gaps arising from employee and contractor assignment, joint development and collaboration arrangements
• Draft the assignment documentation and manage recordal at the relevant registries
• Structure the licences back to the operating companies so they can continue to use the transferred rights
• Establish the group IP register and the invention capture and disclosure process
• Set up the IP governance committee and its terms of reference, and chase compliance across the businesses
• Advise on IP ownership and licensing in commercial, technology and R&D agreements

Candidate profile

• 10 years' PQE or more, gained in-house or at an international firm
• A specialist intellectual property background covering ownership, assignment, licensing and IP in transactions, rather than patent or trade mark prosecution
• Experience of IP due diligence and chain of title work
• Experience of an IP consolidation, holding company structure or IP governance build preferred
• Comfortable in a large, complex and matrixed organisation