Assistant Manager/Manager, IP Counsel

Job description

We are a leading chemical company, with the best teams developing intelligent solutions for our customers and for a sustainable future. Our success as a company relies on the engagement of our employees. We encourage our employees to develop their strengths, and we recognize their achievements. For you, this means a wide variety of job roles, and exciting opportunities for learning and career development.

Description

BASF has been a committed partner to Greater China since 1885. With larger production sites in Shanghai, Nanjing and Chongqing, BASF is a major foreign investor in the country’s chemical industry, and operates the Innovation Campus Shanghai, a global and regional research and development hub. BASF posted sales of over €7.3 billion in 2018 to customers in Greater China, and employed 9,317 people as of the end of that year. For further information, please visit www.basf.com/cn/en.
    Objectives:
·  IP China team started operations 10 years ago, with a focus to enforce BASF’s IP Position in Greater China.
·  Following the IP Strategy, IP China is expected to further develop its service portfolio by gradually broadening the geographic scope to the entire region A/P, strengthen quality and to take global responsibility for inventions made in Campus Shanghai. IP counsels are the “One Stop Shop” for all IP related activities for Business and Research Units in Asia Pacific   Main Tasks:
·  Counselling on exploitation of global IP rights and filing strategies:
·  Advise on the setting up or structuring of a patent strategy within business strategies and/or individual portfolios worldwide. 
·  Advise on cases in which trade secrets are the right tool for protecting your advantage in terms of innovation
·  and/or
·  Global patent analysis (FTO):
·  Produce patent Freedom to Operate (FTO) opinions in relation to products, processes and uses in the context of third party property rights worldwide.
·  Initiate patent report, when a plant is to be adapted or a new product is to be brought into any new market.
·  and/or
·  Globally defending and invalidating IP rights (oppositions):
·  Assist Business and R&D units in the monitoring of third-party property rights and advise on the question of whether opposition or invalidity proceedings should be pursued against such a property right
·  Oversee/ run opposition, appeal and invalidity proceedings as plaintiff (worldwide)
·  Defend and monitor third-party patents worldwide
·  and/or
·  Globally enforcing IP:
·  Lead infringement suits
·  and/or
·  Contract work (Jt. Development- and, license agreements):
·  Drafting and negotiation licensing agreements
·  Drafting and negotiation joint development agreements
·  and/or
·  Handling IP in M&A transactions:
·  In the context of acquisition or divestment projects by BASF, collate the necessary patent documents and reviews the corresponding contracts, prepares due diligence IP report for Commission F.   
·  and/or
·  Drafting & prosecution for a Business Unit or global virtual team:
·  Help to develop an application strategy domestically and abroad and check that there are no legal reasons which stand in the way of an application.
·  Draft the patent applications and file them at the relevant Patent Office and prosecute with worldwide patent offices.
·  Draft utility model applications for global purpose.
·  and/or
·  Trademark and domain protection:
·  Advice on trademark law and management of the worldwide trademark portfolio and on creating brands and co-branding
·  Drafting trademark applications worldwide
·  Negotiating and drafting trademark/ logo licensing agreements
·  and/or
·  Copyright protection:
·  Protecting BASF work and do Copyright infringement
·  Granting licenses over BASF works
·  Taking out licenses over third-party works
·  and/or
·  Design protection:
·  Advising on design protection and management of the worldwide design portfolio
·  Drafting applications for designs worldwide
·  Negotiating and drafting design licensing agreements   Requirements:
·  M. SC in a technical subject, Ph.D in a technical subject preferred
·  Min. 5 years in Intellectual Property area in technical area of responsibility Patent bar in China preferred
·  Deep knowledge in technical subject and extensive professional IP knowledge
·  Patent bar in China preferred
·  Legal bar preferred