ENL Legal Recruitment LSE

In-house IP Counsel

England, West Midlands, Birmingham
27 Jun 2018
25 Jul 2018
Pasquale Agatiello
Practice area
Intellectual property
Legal counsel
Full time
Contract type

In-House IP Counsel - Our client a 'FTSE100' powerhouse is looking to recruit an Intellectual Property specialist to support the business on all contentious and non-contentious IP matters. £-on application

JOB TITLE: In-house IP Counsel


LOCATION: Birmingham OR Bristol (Commutable from: West Midlands, Warwickshire, Gloucestershire, Wiltshire, Avon, Oxfordshire)

SALARY: £-on application


As IP Counsel the role requires the provision of legal advice and assistance in relation to all IP related matters and the IP aspects of commercial and corporate transactions, including the following:

(Non Contentious)

  • Supporting Key Development Contracts, Collaboration Agreements, Teaming Agreement, Trade Mark Licences, Research and Development Agreements with Academic Institutions and Confidentiality Agreements, formulating IP terms which best protect our client's interests, drafting and negotiating agreements where appropriate and advising on the strategic impact of agreed terms.
  • Working at all levels in the business to preserve and protect their position with respect to potential licensees, licensors, suppliers and customers where creation, ownership, use and/or confidentiality of IP is at issue.
  • Leading negotiations and representing our client's interests in its dealings with development partners in multiparty consortium agreements relating to research and development.
  • Providing IP legal support and advice on major commercial contracts and corporate transactions including M&A, advising on cross border issues involving advice from a number of jurisdictions where applicable.
  • Creating standard documents for use in IP agreements and disputes and a process for ensuring their correct use.
  • Reviewing and advising on Grant Funding Arrangements for investment for the development of new technology and IP, including advising on State Aid relating to Grant Funding.


  • Leading on resolution of disputes relating to IP matters and on management of IP related litigation.
  • Assessing the relative strength of cases, level of exposure and formulating strategy and adopting tactics for the optimal outcome and where appropriate taking the lead in settlement discussions.
    Ensuring that likely outcomes are understood by Divisional Management.
  • Managing dispute budgets.

IP Portfolio Creation and Management

  • Lead the IP Creation Activity including development and implementation of an IP Strategy and leading the management of the IP Portfolio by the Patent/IP Management team through agreed IP processes.
  • Lead the patent management activity.
  • Act as a first point of contact for the patent managers' questions and concerns and guide their actions.
  • Lead regular Concern Escalation Meetings with the patent management team to review significant IP risks and agree issues to be escalated to Divisional Executive Team.
  • Manage the IP Budget for external legal expenses to minimise external spend and maximise protection.
  • Lead the patent managers team in all activities relating to the identification and management of 3rd party IP risks through patent managers and external counsel.
  • Manage the portfolio of Divisional owned Trade Marks through external trade mark attorneys.


  • Good knowledge of Intellectual Property law in the UK and EC (and other major jurisdictions) and a solid understanding of commercial contracts
  • At least 5 years relevant PQE gained in a major law firm or in House.
  • A first class academic and legal background.
  • Experience in managing major cross border matters in a highly commercial environment in support of a growth strategy.
  • The ability to provide clear and practical guidance offering innovative ideas and solutions and combining strategic acumen with the attention to detail and expertise that sets minds at rest.
  • The ability to communicate at all levels across a multi-national organisation, to build strong internal and external relationships and to establish oneself as a key member of the legal and commercial teams.
  • Capable of achieving 'trusted adviser' status with the senior leadership team.


Contact Pasquale Agatiello at eNL on 0121 454 1004 or email Pasquale.agatiello@enllegal.co.uk now with your CV or simply call for a confidential discussion.

If you would like to review any other vacancies we are currently handling, then please visit our web site https://enllegal.co.uk/

eNL is handling a number of In-house vacancies throughout the Midlands and the South West. If you are a Commercial Solicitor looking for a move, call now for a confidential discussion. As part of our candidate care process we aim to respond to all applications within 7 working days. If you have not been contacted within this timescale your application has been unsuccessful on this occasion. Please go to http://www.enllegal.co.uk/candidate-registration.php to register your interest for similar positions. Please note our advertisements use PQE/salary levels purely as a guide.