IP Senior Legal Counsel M/F

Date: 09-Dec-2022

Company: Alstom

Leading societies to a low carbon future, Alstom develops and markets mobility solutions that provide the sustainable foundations for the future of transportation. Our product portfolio ranges from high-speed trains, metros, monorail, and trams to integrated systems, customised services, infrastructure, signalling and digital mobility solutions. Joining us means joining a caring, responsible, and innovative company where more than 70,000 people lead the way to greener and smarter mobility, worldwide

The puropose of the job is the management of IP & R&D contracts reporting directly to IP Contract Director of Alstom, your internal network will be Legal, Engineering, Product lines, Innovations and R&D department.

The candidate will be in charge of the following Topics

• Negotiation of R&D and Product (including specificities) Development agreements generating new IP
• Risk assessment and definition of adapted IP strategy in coordination with other IP Boxes (patents, trademarks, designs…)
• Negotiation and drafting of the agreements related to R&D
• NDA
• Study/Collaboration agreements
• Consortium (numerous partners, mainly with external fundings)
• Partnerships : Frame for R&D
• PhD (« Thèse CIFRE »),
• Support limited to legal and formal review of the appendices set up under the lead and responsibility of the operational team
• Legal support for provision related to IP in agreements directly managed and lead in autonomy by other Legal (Region / Procurement) with support of other IP boxes
• FA/SA/Purchase Contract
• Tender / Customer contract
• Contract Management of the R&D contracts and participation to project execution on IP matters in support of other IP boxes/ project team related to these R&D Contracts
• Management of contracts related to existing IP elements
• Risk assessment and definition of adapted IP strategy in coordination with other IP Boxes ((patents, trademarks, designs…))
• Negotiation and drafting of the agreements in coordination with the Patent box:
• Co-ownership rules
• Assignment / Purchase of IP rights – title
• Licence IN/OUT/CROSS
• Support to operational team for setting up appendices
• ToT IN / OUT made in coordination with other IP boxes and lead by Legal Region
• Support to operational team for setting up appendices
• IP Interco agreements: strategy, templates and negotiations (with support of Tax department and Governance Team) / excluding Trademarks Interco’s
• Support to operational team for setting up appendices
• Contractual management of BT portfolio integration operations (in support of other IP boxes and Tax department)
• Contract Management and participation to project execution with support of other IP Boxes / project team
• Support of other IP Boxes for valorization of IP assets
• Contractual IP expertise support to other departments
• Legal memos and support for operational teams, regions, management and other legal departments
• M&A support (data-room investigations, analysis, term sheets, agreements in relation to IP matters, integration operations …)
• Participation to IP Committees: TGV2020, Innovation Kiosk, Metrolab, External Fundings, Innovation Partnership etc
• Litigation (Demand / Defense) related to IP contract box activities
• Transverse activities on trade secret protection / awareness
• Training related to R&D and IP contract Box (internal / external) and some transverse training with the support of the other IP boxes
• Template of agreements / forms
• Instructions regarding IP (IP strategy and ways of working and interacting with Legal IP) use of templates/ Guidelines in coordination with other IP Boxes
• Support to Public Affairs (Legislative and regulatory watch including European non-personal data strategy + participation to syndicate, railway professional association meetings, etc.)
• Escrow commitments management in the Group to be organized, setting out the conditions and administrative actions (for Customers and Suppliers)
• Management of Contract box activities
• Conception and management of tools
• contracts database,
• follow-up tables,
• dedicated Teams
• Definition of KPIs / Metrics for IP contract box activities
• Referencing and Archives of agreements, and any files involving Contract box
• Mapping of existing agreements by technical domain to check consistency
• Presentation sheet of context for strategic files

MAIN REQUIRED COMPETENCESEducational Requirements

• Master 2 degree in law Contracts and Intellectual Property

Experience

• Experience of negotiation of contracts, (License agreements, R&D contracts, Co-developments contracts, Knowledge on the management of software (protection, exploitation, Open source software, patents management, transfer of technology
• Strong team player
• Detailed and results-oriented, with outstanding organizational and analytical skills. Demonstrated business savvy with the ability to work successfully with high level business clients and to evaluate and to accept appropriate risk-taking to protect shareholder value
• Pragmatic and business oriented

Alstom is the leading company in the mobility sector, solving the most interesting challenges for tomorrow’s mobility. That’s why we value inquisitive and innovative people who are passionate about working together to reinvent mobility, making it smarter and more sustainable. Day after day, we are building an agile, inclusive and responsible culture, where a diverse group of people are offered opportunities to learn, grow and advance in their careers, with options across functions and geographic locations. Are you ready to join a truly international community of great people on a challenging journey with a tangible impact and purpose?

Equal opportunity statement:Alstom is an equal opportunity employer committed to creating an inclusive working environment where all our employees are encouraged to reach their full potential, and individual differences are valued and respected. All qualified applicants are considered for employment without regard to race, colour, religion, gender, sexual orientation, gender identity, age, national origin, disability status, or any other characteristic protected by local law.