Legal Advisor KPMG International

The International Office of the General Counsel (IOGC) is a growing and high-performing in-house legal team with personnel based in five countries. The team provides legal advice on a wide variety of key strategic matters and legal, regulatory and reputational issues and risks, and also supports the execution of critical business decisions made by KPMGI.

Your challenges

• Support the most senior patent lawyer within IOGC in working with KPMGI business teams and technology developers
• Support the most senior patent attorney within IOGC in understanding the technical aspects of, and business plan for, KPMG-developed technology solutions
• Assess whether KPMGI has proper IP and data rights to license and/or provide member firms and their clients with use and/or access rights to KPMGI technology solutions.
• Support more senior attorneys in the provision of legal advice on the implementation of AI in KPMGI technology solutions

This is what you bring

• 3-5 years Post-Qualified Experience (PQE) advising on IP and technology law, including patent practice before the UK Intellectual Property Office and European Patent Office and freedom-to-operate analysis
• Qualified lawyer in The Netherlands, European Patent Attorney, UK Chartered Patent Attorney
• Must possess a proficient working knowledge of both on-premises and cloud-based information technology businesses, services, and products
• Must possess a proficient working knowledge of IP and technology law issues that arise in IP portfolios, technology solutions and business operations that span multiple jurisdictions with varied laws and levels of enforcement, and technical legal skills in the areas of IP and technology law, with a focus on the protection and enforcement of IP rights, particularly for patents, copyrightable software and trade secrets, in respect of KPMG-developed technology solutions and infringement of third-party technology
• Some experience negotiating and drafting skills across a wide variety of technology and IP agreements and transaction structures across various jurisdictions

What will you do?

KPMG is now a digital business, and as a result, technology enables everything it does and requires KPMG to continue to transform with technology in support of its Growth and Trust agenda. This role, which is focused on the product and innovation aspects of Intellectual Property (IP), Technology and Data, is a part of the International Office of the General Counsel (IOGC). It focuses on providing legal advice and support from IOGC on the development, protection, enforcement, acquisition and licensing of technology, software and data, particularly risks, protections and opportunities related to the patent aspects of KPMG’s IP, technology and data strategy.

Although this role is primarily focused on product and innovation, this role may also involve providing support to other IOGC lawyers on strategic initiatives and commercial technology transactions, particularly where the licensed technology is protected by patents, is not patent protected but is in a highly patented field, and/or leverages artificial intelligence and blockchain.

The person in this role will execute their responsibilities under the overall supervision of, and working collaboratively with, the most senior patent lawyer with respect to IP, Technology and Data and other senior lawyers focused on IP and technology law. This role requires a person to provide meaningful value-add to business and technology development teams by supporting product and innovation that contributes to over $17 billion in annual revenue, helping to analyse KPMGI’s intellectual property (IP) and technology assets, and advising on patent protection and IP enforcement, all while supporting IOGC’s senior leadership team in managing, mitigating and preventing legal and reputational risk.

The role is an excellent opportunity for a junior lawyer who has focused on patent work (prosecution, litigation, licensing, freedom to operate) to apply their skills to a rapidly growing international patent pipeline focused on emerging technologies and to expand their IP skillsets beyond patent law in a rapidly growing digital business.

Tasks and responsibilities

• This role, which is focused on the product and innovation aspects of Intellectual Property (IP), Technology and Data, focuses on providing legal advice and support from IOGC on the development, protection, enforcement, acquisition and licensing of technology, software and data, particularly risks, protections and opportunities related to the patent aspects of KPMG’s IP, technology and data strategy.
• Although this role is primarily focused on product and innovation, this role may also involve providing support to other IOGC lawyers on strategic initiatives and commercial technology transactions, particularly where the licensed technology is protected by patents, is not patent protected but is in a highly patented field, and/or leverages artificial intelligence and blockchain.
• This role requires a person to provide meaningful value-add to business and technology development teams by supporting product and innovation that contributes to over $17 billion in annual revenue, helping to analyse KPMGI’s intellectual property (IP) and technology assets, and advising on patent protection and IP enforcement, all while supporting IOGC’s senior leadership team in managing, mitigating and preventing legal and reputational risk.
• The role is an excellent opportunity for a junior lawyer who has focused on patent work (prosecution, litigation, licensing, freedom to operate) to apply their skills to a rapidly growing international patent pipeline focused on emerging technologies and to expand their IP skillsets beyond patent law in a rapidly growing digital business.
• The role also offers an excellent opportunity for a junior lawyer to apply existing skills or learn new skills to provide legal advice on the implementation of AI in KPMGI technology solutions, including in respect of compliance with laws and regulations, data rights, IP rights, and internal processes.

Key accountabilities % of time

45% Intellectual Property (IP) Protection & Monetization Program:

• Support the most senior patent lawyer within IOGC in working with KPMGI business teams and technology developers to: (i) identify proprietary assets developed by them (including with respect to artificial intelligence), (ii) determine the best legal methods to protect such IP assets, and (iii) execute processes for such protection.
• Support the most senior patent lawyer within IOGC with patent application filings in the UK Intellectual Property Office and European Patent Office and working with, instructing and managing external counsel for patent application filings outside of those jurisdictions.
• Support the most senior patent lawyer within IOGC by working with global business teams to identify third parties that may be infringing on KPMGI IP and to enforce KPMGI’s rights in its IP, as well as understanding the potential for member firms to license and monetize such IP rights (separate and apart from their use in KPMG technology solutions).
• Support the most senior patent lawyer within IOGC by connecting patent protection to marketing and selling patent-protected technology solutions.

25% Intellectual Property & Technology Advice and Analysis:

• Support the most senior patent attorney within IOGC in understanding the technical aspects of, and business plan for, KPMG-developed technology solutions, and support more senior lawyers in counselling on freedom to operate, intellectual property enforcement, and copyright versus patent versus trade secret protection.
• Support the most senior patent lawyer within IOGC in analysing and advising on: (i) whether KPMGI’s use of third-party emerging technology (including artificial intelligence and blockchain) may infringe on third parties’ patent rights, and (ii) for the purposes of KPMG services and offerings, assessing the strength of third-party patents.
• Support more senior attorneys in the provision of legal advice on the implementation of AI in KPMGI technology solutions, including in respect of compliance with applicable law and regulations, data rights, IP rights, and internal processes to ensure compliance with our Trusted AI framework and principles.

15% Technology Legal Rights Assessments:

• Assess whether KPMGI has proper IP and data rights to license and/or provide member firms and their clients with use and/or access rights to KPMGI technology solutions. This work will also include determining whether any specific terms are required through the license chain and ensuring compliance with the legal aspects of KPMGI’s global quality and risk management policies.

This is what we offer