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Senior Legal Counsel, IP & Brand

Standard Chartered Bank Singapore
Posted 3 days ago Permanent Competitive
Senior Legal Counsel, IP & Brand
The Role Responsibilities
The Senior Legal Counsel is a key member of the Intellectual Property & Brand Legal Team, providing legal advice and subject matter expertise to business units and functions across the Group on all non-contentious and contentious intellectual property projects and matters (including patents, trade secrets, copyright, database rights and trademarks and other associated legal rights), transactional IP matters including IP due diligences, licensing and assignment of IP rights. The role will be based in Singapore and reports directly into the Head, Legal, Intellectual Property & Brand.
Strategy
  • Assisting the Head of IP in providing key insights and direction on the evolution of the Group's tech IP strategy including refining the Group IP Lifecycle Framework, making proposals where need to tailor the Group's IP strategy to align with commercial and legal opportunities and whilst mitigating relevant IP risks.
  • Keeping abreast of developments in technology and intellectual property which are releva nt to the Group's broader digitisation and innovation strategy and new business ventures associated with SC Ventures and virtual banks.
  • Working with relevant stakeholders (including business units and other functions including Tec hnology Transformation & Operations (TTO), Group Corporate Development (GCD), Tax and Corporate Affairs, Brand & Marketing (CABM)) to ensure that the Group achieves the best possible commercial and IP legal position for such transactions.
Business
  • Advising on a range of intellectual property issues across the Group including infringement, ownership and licensing issues and implementing IP protection strategies for tech and non-tech intangible assets.
  • Being a trusted advisor and subject matter expert to relevant stakeholders in the business units, TTO and the Group wide IP Committee on tech IP matters, projects and transactions.
  • Fluent with intellectual property issues when collaborating with third parties including corporates and universities. Familiar with collaborating on cross-functional teams on transactional IP matters involving joint ventures and various partnership structures.
  • Working closely with other legal teams in the Group including SC Ventures legal, Corporate and M&A legal, CPBB legal and country legal teams on strategic initiatives and projects requiring IP & Brand support.
  • Partner and collaborate with business and/or country Legal and team members to ensure IP transactions and initiatives have the necessary legal and regulatory clearance.
Processes
  • Assisting the Head of IP and the Innovation Manager (TTO) maintain all relevant internal registers of the Group's patents, copyrights, trade secrets, trademarks and other relevant intangible assets.
  • Proactively identifying and protecting all tech IP assets by working closely with relevant business units, technology teams, Innovation Manager and Tax whilst ensuring the Group has an adequate freedom to operate scope in relation to key Group technologies.
  • Ensuring patent infringement risks are managed by identifying and quantifying legal risk via freedom to operate/prior art searches and advising on potential mitigants.
  • Ensuring copyright and database rights issues are considered as it relates to technology.
  • Managing the Group's external IP and patent counsels.
  • Managing all global intellectual property disputes (and working with DGIL where necessary) including brand protection matters, registry actions (e.g., oppositions, revocations etc), initiating legal action (including drafting and sending letters of demand), engage external IP litigation counsel where necessary, defending the Group from any intellectual property claims.
  • Provide training to other Legal teams, functions (e.g., TTO, CABM and SC Ventures), and other stakeholders across the Group Functions and Businesses.
  • Keep up to date with Group policies and standards and applicable law across the Group's international jurisdictions.
People and Talent
  • Takes a considered approach on aligning with appropriate culture and values in the Group and exhibits such values when interacting externally and internally with colleagues across the Group.
Risk Management
  • Provide expert guidance and support on legal and operational risk identification and management.
  • Ensure proactive and timely identification, assessment, advice and dissemination of evolving legal and regulatory changes/practices and associated risks on patent, copyright, trade secrets, trademarks and other associated intellectual property issues.
  • Continually embedding all relevant IP risks mitigation measures into the Group's Enterprise Risk Management Framework.
Governance
  • Establish strong relationships with key stakeholders at all levels, while independently performing own duties.
  • Work with Businesses and Functions and colleagues in the Legal Function to identify and develop enhancements, simplifications and innovative solutions to improve and enhance legal operations and service delivery in relation to IP & Brand Legal workstreams including trademarks, patents and transactional/tech IP matters.
Regulatory & Business Conduct
  • Display exemplary conduct and live by the Group's Values and Code of Conduct.
  • Take personal responsibility for embedding the highest standards of ethics, including regulatory and business conduct, across Standard Chartered Bank. This includes understanding and ensuring compliance with, in letter and spirit, all applicable laws, regulations, guidelines and the Group Code of Conduct.
  • Lead the Group Commercial Legal Team to achieve the outcomes set out in the Bank's Conduct Principles. Fair Outcomes for Clients, Effective Financial Markets, Financial Crime Compliance, The Right Environment.
  • Effectively and collaboratively identify, escalate, mitigate and resolve risk, conduct and compliance matters.
Key Stakeholders
  • Head of Group Commercial Legal and the Group Commercial Legal Team
  • Enterprise Legal Team
  • Country Legal Teams
  • Technology Transformation & Operations
  • SC Ventures
  • Corporate Affairs, Brand & Marketing
  • Supply Chain Management
  • Group Tax
  • Other Risk Owners including Privacy, Compliance, Financial Crime Compliance, HR, Group Internal Audit.
  • Relevant Businesses and Group Functions.
Other Responsibilities
  • Embed Here for Good and the Group's brand and values and demonstrate the Valued Behaviours as a member of the Legal Function.
  • Perform other responsibilities as assigned.
Our Ideal Candidate

  • 7+ years' post qualification experience advising on a wide range of multi-jurisdictional patent, tech intellectual property, and transactional and commercial IP matters, including:
  • Detailed knowledge and understanding of intellectual property law and practice.
  • Significant experience in: (i) systematically identifying, harvesting and protecting IP subsisting in technology including briefing external patent counsel on filing and prosecution of patents, (ii) complex ownership and licensing arrangements of tech IP assets; (iii) providing intellectual property advice and leading on IP workstreams (where necessary) in corporate transactions.
  • Must be a registered patent attorney and/or qualified lawyer in a common law jurisdiction
  • A broad understanding of M&A, disposals, joint ventures and other corporate transactions.
  • Experience dealing with multi-jurisdictional IP matters including IP clearance/infringement advice, registration and protection programmes, and multi-jurisdictional dispute resolution.
  • Ability to draft complex intellectual property and commercial arrangements to meet requirements.
  • Ability to independently run and lead contract/dispute resolution negotiations with third parties.
  • Ability to manage complex projects involving challenging legal issues and coordination across multiple time zones.
  • Experience of advising on, and the preparation and use of, contract templates, guidance and playbooks.
  • Understanding of third-party risk management requirements in a regulated sector.
  • A technical background in software, engineering or physics would be a bonus.
Role Specific Technical Competencies
  • Knowledge on Patent Law
  • Knowledge on Copyright & Database Rights
  • Knowledge on Legal Analysis
  • Knowledge on Trademark Law
  • Knowledge on Consumer & Advertising Law
  • Knowledge on Commercial Law
  • Knowledge on Trade Secrets
  • Knowledge on Business Acumen
  • Knowledge on Intellectual Property Disputes
  • Knowledge on M&A Corporate Transactions
About Standard Chartered
We're an international bank, nimble enough to act, big enough for impact. For more than 160 years, we've worked to make a positive difference for our clients, communities, and each other. We question the status quo, love a challenge and enjoy finding new opportunities to grow and do better than before. If you're looking for a career with purpose and you want to work for a bank making a difference, we want to hear from you. You can count on us to celebrate your unique talents. And we can't wait to see the talents you can bring us.
Our purpose, to drive commerce and prosperity through our unique diversity, together with our brand promise, to be here for good are achieved by how we each live our valued behaviours. When you work with us, you'll see how we value difference and advocate inclusion. Together we:
  • Do the right thing and are assertive, challenge one another, and live with integrity, while putting the client at the heart of what we do
  • Never settle, continuously striving to improve and innovate, keeping things simple and learning from doing well, and not so well
  • Be better together, we can be ourselves, be inclusive, see more good in others, and work collectively to build for the long term
In line with our Fair Pay Charter, we offer a competitive salary and benefits to support your mental, physical, financial and social wellbeing.
  • Core bank funding for retirement savings, medical and life insurance, with flexible and voluntary benefits available in some locations
  • Time-off including annual, parental/maternity (20 weeks), sabbatical (12 weeks maximum) and volunteering leave (3 days), along with minimum global standards for annual and public holiday, which is combined to 30 days minimum
  • Flexible working options based around home and office locations, with flexible working patterns
  • Proactive wellbeing support through Unmind, a market-leading digital wellbeing platform, development courses for resilience and other human skills, global Employee Assistance Programme, sick leave, mental health first-aiders and all sorts of self-help toolkits
  • A continuous learning culture to support your growth, with opportunities to reskill and upskill and access to physical, virtual and digital learning
  • Being part of an inclusive and values driven organisation, one that embraces and celebrates our unique diversity, across our teams, business functions and geographies - everyone feels respected and can realise their full potential.
Recruitment assessments - some of our roles use assessments to help us understand how suitable you are for the role you've applied to. If you are invited to take an assessment, this is great news. It means your application has progressed to an important stage of our recruitment process.
Visit our careers website www.sc.com/careers
Job ID  2200027347
ABOUT COMPANY
London, United Kingdom
85000 Employees Corporate Banking
We’re an international bank, nimble enough to act, big enough for impact. For more than 160 years, we’ve worked to make a positive difference for our ...
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