:Legal Counsel IP (Trademarks) :ASPEN Holdings : https://www.aspenpharma.com/
This position is responsible and accountable for the management and protection of the multi-jurisdictional trademark portfolio of the Aspen Group, developing and implementing such portfolio in line with the Aspen Group IP policy, practices & processes and to both manage and perform direct work on the varied trademark portfolio in various jurisdictions.
TRADEMARK PORTFOLIO MANAGEMENT
Take responsibility for the accurate searching, filing, prosecution, maintenance and enforcement of the Aspen Group’s multi-jurisdictional trademark portfolio.
Trademark clearance work, including analysis of international search results and written opinions on availability for trademarks for use and registration;
Support and provide effective and efficient advice on Aspen Group transactions in relation to intellectual property (trademark) aspects of mergers, acquisitions & divestments; trademark licensing arrangements; and similar pharmaceutical in- and-out-licensing arrangements;
Manage post-closing integration of acquired or divested trademark portfolio;
Management and responsibility for trademark litigation in various multinational territories;
Provide strategic advice regarding the trademark and copyright aspects of social media and website communications, including blogger/influencers, as well as all aspects of advertising and promotional materials;
Assist with international trademark prosecution, including review of trademark administrator work on filings and international correspondence;
Manage in-house intellectual property management system for trademarks to ensure ongoing accuracy and access to Aspen’s trademark portfolio data;
Review and monitoring of trademark watch notifications received from intellectual property law firms;
Collaborate with a diverse team of intellectual property professionals and support staff, providing assistance and guidance as required;
Manage relationship with a wide network of external multinational intellectual property law firms;
Secondary focus on other statutory intellectual property types including patents, registered designs and copyright.
PRECEDENT, TEMPLATE AND LEGAL PORTAL DEVELOPMENT
Draft and compile precedents, templates and opinions for use by wider Aspen legal team and/or Aspen business in relation to trademark matters.
Constant review and update of previous commercial intellectual property precedents and templates relating to trademarks and necessary communication to wider team of improvements/changes/additions.
Understand and maintain Aspen intercompany contracting matrix for intellectual property transactions.
INVOLVEMENT IN OTHER BUSINESS AREAS TO DEVELOP BROADER UNDERSTANDING OF ASPEN’S GLOBAL BUSINESS
When requested, provide professional, structured, timely and commercially applicable legal support to other business areas, including other territories, to expand scope of legal expertise in other areas of the Aspen business.
LEGAL DUE DILIGENCES
Responsible for trademark and any other form of statutory intellectual property rights audits and legal due diligences in respect of potential mergers, acquisitions and disposals by the Aspen Goup.
Assist with commercial legal agreement review and audits for transactional activities by Aspen.
Researching legal implications of multijurisdictional trademark legislation and case law that could impact Aspen’s trademark portfolio and report findings to the Legal Counsel Lead – IP and Group Legal Officer.
Monitor and comment on new and amended trademark legislation and regulations in relevant jurisdictions and provide advice on impact on Aspen’s trademark portfolio.
Update the Group Legal Officer with legislative amendments and recommend and oversee implementation of any necessary changes in relation to the trademark portfolio.
Execute legislative compliance tasks requested by the Group Compliance Officer in terms of the Aspen Legislative Compliance Policy.
Remaining aware of and raising any potential or new intellectual property legislation that may affect the Aspen Group.
CUSTOMER SERVICE & DEVELOPMENT
Follow-up, resolve and close all queries in the shortest possible timeframe within the policy framework;
Sense of urgency and solution orientated and at all times positive, energetic business facilitating attitude;
Display a professional attitude when responding to customer’s needs;
Propose, develop and continuously update methods for improving customer services;
Constantly update Legal Counsel Lead – IP, internal and external customers as to the progress of their queries;
Identify development needs and apply same;
Set best practice to ensure expertise;
Co-ordinate up skilling and multi-skilling in line with IP team development.
Manage legal and intellectual property expenses against budgeted cost.
Constant benchmarking of costs of intellectual property related services, particularly trademark renewals.
Ensure cost savings whenever possible and prudent.
EDUCATION QUALIFICATIONS AND EXPERIENCE:
Postgraduate Degree with legal (preferably LLB) and technical (preferably BPharm and or BSc) graduate qualification.
Postgraduate qualification as a trademark attorney.
Membership of professional body (such as the Law Society of SA and the South African Institute of Intellectual Property Law).
At least 5 to 7 years’ relevant experience is preferable, including 2-3 years’ pharmaceutical industry experience;
Demonstrated experience in a law firm, handling corporate IP matters;
Ability to work effectively within a highly diverse global law department;
Ability to handle a large international trademark portfolio independently;
Sound legal commercial knowledge and experience;
Commercial intellectual property experience including trademark licensing arrangements;
Intellectual property litigation experience;
General business and specialised pharmaceutical industry experience an advantage;
Legal project work experience;
Strong research and writing skills.
Thorough understanding of multinational intellectual property laws, particularly trademark legislation;
Knowledge of the international intellectual property services ecosystem;
Understanding on the intersection between intellectual property laws and competition (anti- trust) legislation;
Legislation and Legal practice management;
Pharmaceutical Industry knowledge or exposure;
Knowledge of business;
Reputation for high ethical standards and integrity.
Strong analytical skills and ability to exercise sound business judgment and work independently but as a member of an integrated global law department;
Display emotional maturity;
Established conflict resolution as a default demeanour;
Display a high level of interpersonal skill;
Lead or direct a diverse functional program through subordinates as applicable;
A natural default to accuracy;
Capable to act as the authoritative source of knowledge on trademark matters within Aspen Legal and within the wider Aspen Group of companies;
Be capable of creating functional IP (trademark) policy, practices and processes for Aspen.
Makes Good Decisions
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