Position Title:  Counsel, Patents

PMI

We’ve built the world’s most successful cigarette company, with the world’s most popular and iconic brands. Now we’ve made a spectacular decision. We will be far more than a leading cigarette company. We’re building PMI’s future on smoke-free products that are a much better choice than cigarette smoking. Indeed, our vision – for all of us at PMI – is that these products will one day replace cigarettes.

Why are we doing this? Because we should … We understand the millions of people who smoke cigarettes. They are looking for less harmful, yet satisfying, alternatives to smoking. We will give them that choice. We are dedicated to our employees and our shareholders. We will fulfill that commitment by pursuing this long-term vision for success. Society expects us to act responsibly. And we are doing just that, by delivering a smoke-free future. … And because we now can. Success in the cigarette business gives us the resources to pursue our ambitious vision. Thanks to the imagination and perseverance of thousands of people at PMI, we have developed breakthrough products that are smoke-free and enjoyable.

Role Summary

Attorney with substantial patent subject matter experience within the Legal Department who will be effective in providing guidance to business and functional leaders across the organisation. The attorney will have responsibility for performing a wide range of legal matters of varying complexity, both independently and in team situations. This will include day-to-day advice to other PMI Law and business colleagues on a range of Intellectual Property (IP) issues, such as patent drafting and prosecution, freedom-to-operate (FTO), contentious patent office proceedings (e.g., oppositions), and any other PMI workstreams that may involve patent and technology law.  The role sits within PMI’s consumables and life sciences patent team and supports a wide range of RRPs, with a view to new product directions.

Key Responsibilities:

• Evaluating the patentability of inventions, working with outside counsel to draft and prosecute any resulting patent applications. Devising patent filing and management strategies to provide a competitive advantage.
• Independently leading FTO, diligence, and oppositions projects, as well as driving aspects of larger IP projects.
• Helping business partners accurately understand the risks and consequences of a given situation or course of action. 
• Effectively communicating the risks and the consequences and proactively developing alternatives to manage identified risks.
• Identifying and analysing legal issues, drafting key documents, presenting clear recommendations and ensuring legal compliance as it relates to the relevant legal framework.
• Supporting the increase of IP fluency of key business partners through coordination, development, roll out and training of IP guidance, best practices, and ways of working to partners across the business, including within Research and Development, Procurement and Legal.
• Staying current with legal developments, best practices and benchmarks in the noted areas of law and assisting internal clients in implementing policies and procedures in response thereto.
• Maintaining a culture with a high degree of emphasis on dignity, respect, and inclusion.

Key Skills:

• Actively counseling members of Research & Development organisations to identify new inventions, as well as devising and implementing strategies for patent protection over the extended product development life cycle.
• Preparing and prosecuting patent applications worldwide, including effectively managing outside counsel as needed, and assessing any IP ownership and inventorship issues.
• Evaluating and monitoring third party patent portfolios, and developing reactionary strategies where necessary.
• Working cross-functionally to provide IP guidance and support to other members of functional and regional legal teams.
• Robust interpersonal, networking, public speaking, and writing skills, with the confidence and credibility to act quickly, communicate effectively with diplomacy and civility, and command respect of both internal and external audiences.
• Ability to work in a fast-paced environment, handle multiple, conflicting priorities while managing a substantial workload and client expectations.
• Ability to maintain an appropriate perspective regardless of the delicacy or pressure of a situation.
• Ability to think strategically and exercise sound judgement.
• Ability to independently oversee projects and lead them to successful completion in an organised, efficient, and effective manner.
• Ability to work in a multi-disciplinary setting to achieve consensus.
• Attention to detail.

Knowledge and Experience Desired to Undertake this Role:

• Licensed patent attorney in at least one jurisdiction where PMI operates.
• Advanced degree in a relevant scientific area associated with Consumables and Life Sciences, for example Chemistry, Biochemistry, and Materials Science.  Some experience of simple engineering would also be beneficial.
• Experience of patent drafting and prosecution, with the management of large, complex portfolios a plus.
• Experience of supporting contentious patent proceedings (e.g., oppositions) desirable.
• Experience of carrying out detailed FTO and/or diligence projects, identifying suitable mitigations strategies where appropriate.
• Experience of working successfully in a highly results-oriented and performance-driven environment with a focus on excellence.
• Preferred: both in-house and major law firm experience.
• Solid business acumen in the area of consumer goods a plus.

Why Join Us?

At Philip Morris International, you will:

• Be part of an ambitious team driving significant change in the industry.
• Work in a dynamic and inclusive environment that fosters collaboration and innovation.
• Have the opportunity to develop your career in numerous directions, with access to world-class training and development programs.
• Enjoy a competitive compensation and benefits package.

Join us in our mission to deliver a smoke-free future and make a tangible impact on the world. If you are ready to take on this exciting challenge, we would love to hear from you!

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