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Senior Patent Attorney

Job Type: Full time
Company/Firm: Pacific Northwest National Laboratory
Location: Richland, Washington
Date posted: 02/03/10
Salary: Salary dependent on experience
Job Description:

  Organization and Job ID
Job ID: 118109
Directorate: Office of General counsel
Division: Intellectual Property Legal Services

Job Description
The Senior Patent Attorney is expected to be an individual contributor with extensive experience and will be considered an expert in the practice of intellectual property law with a particular emphasis on patent law. While this position administratively reports through the Intellectual Property Legal Services Department (IPLS) Patent Group, the incumbent will be involved with and influence most aspects of the IPLS mission and objectives. The incumbent serves in a key IPLS role impacting work product delivery and quality to meet customer demand.

This position is also responsible for providing advisory support and services to the IPLS IP Transactions Group. The required support activities include but are not limited to providing guidance, support and legal advice regarding licensing, Government contracts, copyright, and trademark activities. IP Transactions Group activities contribute to the receipt of more than $4 million in license revenues and $18 million in total consideration received by Battelle at PNNL in each of the last two years.

The incumbent is expected to provide independent legal advice regarding all forms of intellectual property (patents, copyrights, trademarks, trade secrets, etc.) directly to PNNL and Battelle officers, managers, and employees with little or no involvement or direct supervision by the Managing Patent Attorney or the IPLS Manager. This attorney has recognized patent law expertise including a command of the theory and principles pertinent thereto and has: (i) demonstrated the ability to work effectively with the United States Patent and Trademark Office without supervision; and (ii) the ability to mentor and train other patent practitioners. This position retains and assists with outside counsel management.

Equal Employment Opportunity
Pacific Northwest National Laboratory (PNNL) is an Affirmative Action / Equal Opportunity Employer and supports diversity in the workplace. All employment decisions are made without regard to race, color, religion, sex, national origin, age, disability, veteran status, marital or family status, sexual orientation, gender identity, or genetic information. All staff at the Pacific Northwest National Laboratory must be able to demonstrate the legal right to work in the United States.

Necessary Experience:

 Minimum Requirements
- Undergraduate degree in a natural science or engineering discipline;
- Advanced degree in a natural science or engineering discipline is desirable but not required;
- Juris Doctorate from an ABA-accredited university;
- Licensed to practice law and represent clients by a state bar association;
- Licensed to practice law and represent clients before the United States Patent and Trademark Office;
- At least 5-8 years of practice as a patent attorney in either a law firm or a corporate intellectual property law office;
- Detailed understanding of and experience with practice before the United States Patent and Trademark Office;
- Detailed understanding of the Patent Cooperation Treaty, and practice thereunder;
- Intimate knowledge of and familiarity with statutes and regulations relating to intellectual property arising from U.S. Government contracts;
- Knowledge of and experience with the U.S. Department of Energy management and operating contracts and regulations and policies regarding intellectual property arising from a DOE national laboratory;
- Excellent written and oral communication skills; and
- Ability to develop corporate policy and act upon such policy independently.

This position is responsible and accountable for participating in the day-to-day IP protection functions of Battelle and PNNL with particular emphasis on: (i) invention identification; and (ii) securing of rights for these inventions by understanding and reviewing appropriate reporting mechanisms and the preparation and prosecution of patent applications teaching and claiming the inventions. At least 200 inventions have been reported by PNNL staff for each of the last four years. The incumbent will be required to coordinate with a various interested organizations at PNNL, particularly Technology Commercialization, and elsewhere to determine whether a patent application should be filed to protect an invention. IPLS files approximately 75-100 patent applications, responds to approximately 250 Office Actions, and spends more than $2 million on patent application preparation and prosecution activities per year. Most PNNL patent applications have historically been filed by retained outside counsel. However, the last three years have seen a marked increase in patent application filings and prosecution actions using in-house patent agents and patent attorneys. The emphasis on in-house patent practice provides Battelle with an average savings of $5000 per patent application filing. An experienced patent practitioner is expected to be able to file a patent application of average complexity with less than 40 hours of charged labor.

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