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Senior Legal Advisor – Product & Innovation Specialist

Date: Apr 29, 2021

Location: London, United Kingdom

Company: KPMG UK

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.

Role Summary

This role will play an important part of the technology, intellectual property and data licensing practice in IOGC, which plays a pivotal role in providing legal support for – and advising on legal risks, protections and opportunities related to – KPMG’s IP, technology and data strategy, value chain and revenue-growing initiatives.

The role will provide opportunities to advise KPMGI leaders and their teams on three key areas of the practice:
- product and innovation strategies for KPMG technology solutions;
- procurement and supplier transactions with technology and services providers; and
- strategic global initiatives with respect to technology, intellectual property and data licensing.
The role will focus on mitigating against legal risks while supporting the organization’s growth through use of technology. We expect the role will make an impact on the organization’s goals of embedding technology in everything KPMG does, developing technology solutions that suit member firm clients’ needs, and leveraging data.
This role will report into the head of the IOGC’s technology, intellectual property and data licensing practice. We expect that the successful candidate will primarily perform the following work with respect to products and innovation:

Legal and Regulatory Advice: Provide advice on legal and regulatory risks and requirements arising from the design, development and licensing of KPMGI technology solutions and the processing of data by such solutions. For each KPMGI-developed or KPMGI-owned technology solution, this work will require understanding the technical aspects of, and business plan for, such solutions. This work will also include advising on issues related to cross-border intellectual property and data rights, the use of open source software, whether there is freedom to operate, the benefits of copyright versus patent versus trade secret protection, and market trends related to the foregoing. This work will involve substantial influencing of, and collaborating regularly with, KPMGI professionals in audit, tax, advisory, risk management, information protection, technology development, cloud infrastructure, and procurement.

IP Protection & Monetization Program: Work with KPMGI business teams and technology developers to create an intellectual property protection program that: (i) identifies patents, trademarks, trade secrets, copyrights, know-how and other proprietary assets developed by them, (ii) determines the best legal methods to protect such IP assets, and (iii) implements processes for such protection. This work will also require supporting Global audit, tax and advisory functions in their establishment of an “invention committee” and collaborating with KPMGI professionals participating in such committee to determine how each IP asset will be protected and, more generally, creating standards for prioritizing disclosures and patent filing decisions. Over time, we expect that this work will expand to working with global business teams to identify companies 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).

Procurement: Provide legal support for the procurement of technology included in, commingled with, or which forms the basis of, KPMG technology solutions. This work will include advising on, drafting and negotiating various strategic intellectual property and technology agreements, with a focus on complex licenses and services agreements (including software license agreements, data rights agreements, cloud services agreements (i.e., SaaS, PaaS, IaaS), software/technology development agreements, and software/technology acquisitions).

Global Initiatives: Support strategic global initiatives with respect to technology, intellectual property and data licensing. We expect this work may include providing legal support and advice on global priority solutions and data aggregation initiatives related to KPMG technology solutions.

Training and Education: Train and educate KPMGI professionals on legal risks related to technology design and development and use of data in technology solutions.

Technical Skills Required

A candidate should have the following technical skills:
- Advanced technical legal skills in the areas of intellectual property and technology law, with a strong focus on providing legal and regulatory advice on developing, licensing, and protecting technology, IP and data.
- Strong negotiation and drafting skills across a wide variety of technology, intellectual property and data license agreements and transaction structures across various jurisdictions, as well as bespoke and complex legal, business and technical issues.
- Advanced communication skills to enable the translation of complex legal and regulatory issues, within the context of complex technical and business issues, into easily understandable advice.
Qualifications & Licenses

A candidate must be qualified and licensed to practice law and have a degree from an accredited college or university.

Experience & Knowledge

A candidate should have the following experience and knowledge:
- Minimum 6 years PQE of experience in the areas of intellectual property, technology and data law, with substantial experience advising on laws and regulations affecting the design, development and licensing of technology solutions and the processing of data by such solutions;
- Significant experience advising on protecting and enforcing intellectual property, technology and data rights, US and EU data privacy issues, artificial intelligence platforms, data and analytics platforms, and mobile applications;
- Significant experience negotiating a variety of technology agreements and transaction structures;
- Must possess an excellent working knowledge of cloud-based information technology businesses, services and products;
- Ability to advise on, and drive forward the implementation of, solutions to complex issues and matters with an international/cross-border dimension;
- Understands how to balance the needs, demands and requirements of a global business with legal risks and protections;
- Must be self-motivated and able to thrive in a fast-paced, high-volume legal department with many different stakeholders worldwide;
- Understands how to foster a collaborative and inclusive environment amongst other KPMG professionals;
- Cultural sensitivity required to engage with people at all levels and with diverse backgrounds;
- Deep knowledge and awareness of global business, legal and technology trends which may impact the KPMG brand; and
- Experience in instructing and managing external counsel on matters, as appropriate (other than the most significant matters, on which the individual in this role will work alongside a Partner or Director level lawyer within IOGC).
Additional Notes
- Some domestic and international travel will be required (once countries open up their borders and it is safer to do so).

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