Senior Legal Counsel, Ip

Osterley, Greater London, United Kingdom

Job Description


Want to do the best work of your life? With 23 million customers in 6 countries, make your mark at Europe\xe2\x80\x99s leading media and entertainment brand. A workplace where you can proudly be yourself; our people make Sky a truly exciting and inclusive place to work.

This is a great opportunity for an intellectual property lawyer as a Senior Legal Counsel within the Litigation, Anti-Piracy and Intellectual Property team of Sky\xe2\x80\x99s in house Legal Department, to support across all business areas.

In particular, your role will involve contentious and non-contentious matters relating to Sky\xe2\x80\x99s brand and technology IP rights, including protecting and enforcing Sky\xe2\x80\x99s brand, capturing innovation and obtaining patent and design registrations, and exploiting Sky\xe2\x80\x99s IP commercially. You will also advise on IP litigation risks, opportunities, licensing and disputes with third parties across the Sky business, and have potential to work on commercial litigation, anti-piracy and contract disputes.

The Litigation, Anti-Piracy and IP team currently comprises one head counsel, four senior legal counsel (including this role), two paralegals, and one trainee. We are responsible for the SKY trade marks in the UK and Ireland, and all non-SKY trade marks worldwide. We protect Sky\xe2\x80\x99s brands in all courts including the CJEU, Supreme Court and in IP registries around the world.

We are also responsible for the Group\xe2\x80\x99s patent and designs portfolios, as well as providing subject matter expertise on all intellectual property matters. The team also deal with all UK commercial litigation and disputes and provide general risk management and dispute resolution advice to the broader legal team and the business as a whole. The team also plays an increasingly important role in devising and overseeing anti-piracy strategies, including civil litigation and criminal prosecutions.

We seek an experienced IP professional, ideally someone who is able to support across the breadth of the team but an experienced trade mark attorney would also be considered. The role will offer a wide variety of cutting-edge work and provide first-class opportunities for development and growth, both within the team and more broadly across the department.

What you\'ll do:

  • Provide expert analysis, strategic advice, leadership and business partnering to internal clients and stakeholders (the business or other members of the legal team, including at senior e.g. executive levels) on potential IP risks, opportunities, and disputes with third parties and propose creative solutions.
  • Advise on the use of Sky\xe2\x80\x99s brands and assist with new brand risk assessment (trade mark clearance).
  • Lead on trade mark monitoring, opposition, revocation and invalidity actions by third parties against SKY marks, and by Sky against third party marks, in the UK and ROI; and other trademarks internationally.
  • Trade mark portfolio management and development, including applications, specification objections and renewals in the UK, Ireland and internationally (non-SKY marks).
  • Manage Sky\xe2\x80\x99s patent and design portfolios including innovation capture and managing external lawyers and attorneys to prepare and prosecute patent and design applications.
  • Preparation and negotiation of IP licences and IP contract terms and impacts for wider commercial and corporate deals.
  • Lead IP matters which have escalated to litigation or pre-action stage and coordinate with business/legal stakeholders.
  • Review, analyse and summarise legal and commercial documentation.
  • Retain, instruct and manage work of outside law firms/counsel as necessary and in a manner which promotes efficiency and cost-effectiveness.
  • Build effective relationships with legal colleagues and the wider Sky businesses (including Sky Group and Comcast/NBCU).
  • Support other team members within the IP & Litigation legal team and broader Legal team.
  • Contribute to team training, knowhow, professional development initiatives and coach and develop others (eg. paralegals and trainee).
  • Proactively advise on changes to IP laws and the impact this may have on Sky\xe2\x80\x99s business
  • Seek and co-ordinate input where necessary from other legal teams and the business to assist with dispute resolution or developing Sky\xe2\x80\x99s IP portfolios.
  • Conduct IP due diligence on third party businesses to support the broader legal and Comcast M&A teams. Liaise closely with SIAG (Sky\xe2\x80\x99s International SKY Trade Mark Office in Switzerland) who manage Sky\xe2\x80\x99s international brands.
Qualifications

Essential
  • 5+ years PQE or equivalent experience within a highly regarded law firm or equivalent in-house
  • UK law experience in relevant areas
Desirable
  • Completed Bristol/Oxford IP diploma or relevant vocational qualification
Professional Experience

Essential
  • Extensive trade mark and passing off experience
  • Detailed understanding of copyright, breach of confidence and other IP rights
  • Significant experience in IP office actions
Desirable
  • In house experience at a large complex fast-paced organisation
  • Exposure to Telecommunications, Media and/or Consumer Electronics Industries
  • Anti-piracy experience
  • UK Commercial litigation experience
  • Overseas litigation and IP office actions experience
  • Patent and design protection and licensing experience
  • Extensive dispute resolution experience
Skills

Essential
  • Commercial and cost effective approach with an ability to engage with internal clients across Sky\xe2\x80\x99s business and devise creative solutions
  • Ability to think critically and take a strategic approach e.g. to protect and grow Sky\xe2\x80\x99s IP portfolio
  • Top quality drafting skills
  • Analytical mindset
  • Ability to hit the ground running, with the experience and confidence to give legal advice quickly and independently
Desirable
  • Ability to review and analyse contracts / other commercial documents and summarise key issues
  • Experience of contract negotiation
  • Ability to review and analyse potential IP infringement (both hard and soft IP)
Behavioural Style

Essential
  • Highly motivated and pro-active, with excellent attention to detail and an ability to find sound commercial solutions to challenging legal and commercial issues
  • Great team player, with strong interpersonal and communication skills and the ability to build rapport and establish trust and business partnering at all including senior levels
  • Confident, collaborative, proactive self-starter
  • Ability to work under pressure and to tight time scales, managing competing priorities
  • Commercial and pragmatic outlook
  • Takes ownership, drives things forwards and develops leadership skills
Legal

As a team, we pursue the highest standards and demonstrate commitment, integrity and judgement. We exist to add real value by sustainably providing the highest quality business-focussed legal expertise that keeps Sky competitive. Through our work we help to bring better content and innovation to all of our customers, better connecting them to more of what they love. Our vision is to create the Legal team of the future, together \xe2\x80\x93 operating at the heart of Sky, famous for adding value.

The Rewards:

There\'s a reason people can\'t stop talking about #LifeAtSky. Our great range of rewards really are something special, here are just a few:
  • Sky Q, for the TV you love all in one place
  • A generous pension package
  • Private healthcare
  • Discounted mobile and broadband
  • Access a wide range of exclusive Sky VIP rewards and experiences
How you\'ll work:

We know the world has changed, and we want to offer our employees the chance to collaborate at our unique office spaces, whilst enjoying the convenience of working from home.

We\'ve adopted a hybrid working approach to give more flexibility on where and how we work. You\'ll find out more about what this means for this role during the recruitment process.

Your office base:

Osterley:

Our Osterley Campus is a 10-minute walk from Syon Lane train station. Or you can hop on one of our free shuttle buses that run to and from Osterley, Gunnersbury, Ealing Broadway and South Ealing tube stations. There\xe2\x80\x99s also plenty of bike shelters and showers.

On campus, you\xe2\x80\x99ll find 13 subsidised restaurants, cafes, and a Waitrose. You can keep in shape at our subsidised gym, catch the latest shows and movies at our cinema, get your car washed and even get pampered at our beauty salon.

Inclusion:

At Sky we don\xe2\x80\x99t just look at your CV. We\xe2\x80\x99re more focused on who you are and your potential. We also know that everyone has a life outside work, So we\'re happy to support you as much as we can with flexible shift patterns.

We are a Disability Confident Accredited Employer, and welcome and encourage applications from all candidates. We will look to ensure a fair and consistent experience for all, and will make reasonable adjustments to support you where appropriate. Please flag any adjustments you need to your recruiter as early as you can.

Why wait?

Apply now to build an amazing career and be part of a brilliant team. We can\xe2\x80\x99t wait to hear from you.

To find out more about working with us, search #LifeAtSky on social media.

Just so you know: if your application is successful, we\xe2\x80\x99ll ask you to complete a criminal record check. And depending on the role you have applied for and the nature of any convictions you may have, we might have to withdraw the offer.

Sky Group

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Job Detail

  • Job Id
    JD3014696
  • Industry
    Not mentioned
  • Total Positions
    1
  • Job Type:
    Full Time
  • Salary:
    Not mentioned
  • Employment Status
    Permanent
  • Job Location
    Osterley, Greater London, United Kingdom
  • Education
    Not mentioned