Paralegal / In house Counsel

Paralegal / In house Counsel - Intellectual Property and Contracts 

Design Blue Limited (trading as D3O) 

Croydon - Negotiable / Market Rate Salary  

Overview of the Paralegal / In House Counsel role: 

We are D3O, a fast growth engineering, design and technology company based in the UK, with offices in China and US.  
We’re a collective of engineers, chemists, product designers and industry experts who work to find and solve the problems that matter.
Since our days as a start-up, we’ve been making pioneering protective products used worldwide by soldiers, professional athletes, industrial workers and people like us.
We enable and empower people who use our products to take risks, challenge their limits and stay safe.
For the world-class brands we’re proud to partner with (including 3M, Under Armour, Triumph, Red Wing), we create market-defining products that add value and create an advantage.
So, whether it’s light-weight aerodynamic protection for skiers and motorcyclists, precision safety equipment for oil rig workers or the everyday magic that keeps your smartphone in one piece, it’s all part of a proven formula of how we do things.

The Paralegal / In house Counsel duties: 

We are looking for a qualified lawyer or a paralegal with experience in drafting a vast range of contracts; supply and IP (TM and patents) Licenses, assignments and notification letters, R&D consultancies, with minimum supervision.

Reporting to the company’s CEO and CFO, liaising with the management team, the Paralegal / In house Counsel will prepare and manage the contracts supporting and driving new and existing business opportunities for the company.  

Key activities and Responsibilities:

The Agreement drafting 

1. Prepare Non Disclosure Agreements varying in scope, purpose and jurisdictions, assess and advise on proposed amendments/variations;
2. Prepare and support commercial negotiations of IP Licences and cross-licences, pure and hybrid. Amend contractual obligations in line with the development of contractual relationships;
3. Prepare Supply and Manufacturing Agreements for US, EU and Asia;
4. Prepare Consultancy, Collaborative Agreements and Joint Development Agreements, managing the generation of foreground IP;

Familiarity with IPR prosecution

1. Instruct external patent and TM attorneys in filing and prosecute relevant IP, in line with the business strategy;
2. Conduct technology harvesting to identify innovations, assessing the best IP Protection;
3. Manage the rights in the IP portfolios;
4. Work with marketing, CMO and the CEO to conduct initial assessments of TM and brand communications matters; 
5. Liaise with external law/IP firms to file and prosecute the IPR.

Necessary Qualities/Experience and capability of the Paralegal / In house Counsel

• At least a degree in a scientific subject (chemistry, material science, or engineering preferred) in addition to contract drafting and negotiating experience, or at least 3 PQE;
• Good working understanding of Contract and IP Law, and the requirements for IPR prosecution in UK/EU and US primarily; familiarity with the system and practical approach to examination procedure;
• Good communicator, able to gather necessary information to prepare agreements that embodies the business deals. Able to work effectively with the commercial team, the logistic team, the quality team, the technology and development team, in different territories to draft HoT, LoI and fully fledged agreements;
• Patient, self-motivated, hard-working, results-oriented, problem solver;
• Fast learner, use to work efficiently at pace and under pressure;
• Commercially aware;
• High level of interpersonal, oral and written communication, and presentation skills;
• Driven and comfortable to work with minimum supervision;
• Competent with MS Office packages (Word, Outlook, Excel & PowerPoint) and Salesforce.com (or equivalent) CRM tool.

Preferred Experience

•  Previous SME in-house role is highly beneficial.

If this Paralegal / In House Counsel role sounds right for you, apply now.