Legal Advisor

Legal Advisor - London

About KPMG International

Together with more than 273,000 colleagues in 143 countries throughout our member firms, people at KPMG imagine big ideas and bring solutions to life for clients both big and small. A role with KPMG International will open a world of opportunity in your career.

KPMG International helps set the strategy and protects the reputation of this global organization of independent professional services firms providing Audit, Tax and Advisory services. We deliver value to our member firms and drive positive change in the communities we serve. By joining us you will gain a unique understanding of how a global organization operates and work on projects that impact the whole organization. From setting standards and best practices to developing innovative tech- enabled solutions for clients, you'll be part of a global team changing the way our business operates. We look forward to welcoming you to our team.

About this Team

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

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.

Key Accountabilities

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.

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.

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.

Collaboration with Other KPMGI and MF Professionals:

Work collaboratively with Global professionals in technology and software development, technology architecture and infrastructure, risk management, clients and markets, procurement, and branding and marketing, as well as other intellectual property, technology and data lawyers within KPMG member firms in major jurisdictions.

Training & Education:

Support more senior lawyers in preparing and providing training and education to KPMGI professionals on how to strategically consider protecting KPMGI IP and avoiding misuse of third-party IP, practicing patents separate and apart from technology solutions, and identifying third party use of KPMG owned IP.

Experience & Knowledge

Mid level qualified lawyer advising on IP and technology law, including patent practice before the UK Intellectual Property Office and European Patent Office and freedom-to-operate analysis

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

Experience in taking the day-to-day lead with minimal supervision on less complex/less strategically significant matters

Under overall supervision of a more senior lawyer, experience in taking accountability for, and driving forward, aspects of matters that deal with the implementation of, solutions to complex issues and matters with an international/cross-border dimension

Experience in quickly absorbing and processing a large amount of information in respect of complex issues with minimal supervision

Ability to manage and prioritize a large volume of matters with competing deadlines and different internal stakeholders

Some knowledge and developing awareness of global business, geopolitical, legal, regulatory and technology issues/trends which may be relevant to KPMG and the Audit & Accounting profession more broadly

Experience in working on cross border matters and well-developed cultural sensitivity to enable engagement with people at all levels and with diverse backgrounds

Technical skills, abilities & qualifications

UK qualified lawyer (or equivalent if qualified outside of the UK)

European Patent Attorney

UK Chartered Patent Attorney

Intellectual Property, Technology & Data

Proficient 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

Proficient skills advising on protecting and enforcing IP and technology rights, artificial intelligence platforms and models, and data and analytics

Experience advising on trademark matters and blockchain is beneficial

Well-developed legal drafting skills

Well-developed communication skills to enable the translation of complex legal and regulatory issues in their practice area into easily understandable advice

Developing 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

Some experience in negotiation