Patent/ip Transactional Attorney Ii

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Patent/IP Transactional Attorney II
Duties: Maintains an active patent preparation and prosecution docket and also provides counsel on all aspects of Intellectual Property transactions and contributing to the diverse and evolving needs of the Office of General Counsel. Interprets legal and other contractual provisions, government regulations, statutory and case law, and provides counsel on the appropriate course of action to minimize organizational risks and exposures. Performs the timely drafting and prosecution of the laboratory's domestic and foreign patent docket, with an emphasis on materials science technologies, including photovoltaic materials, nanomaterials, thin films and other energy-related technologies. Drafts domestic patent applications and responses to USPTO correspondence predominantly in-house but retains and manages outside counsel in the preparation and prosecution of patent applications as needed. Effectively collaborates with IP administrators and patent agents to manage the assigned docket. Coordinates with counsel of patent licensees as applicable on prosecution matters. Works closely with the Technology Transfer Office and research staff in identifying, evaluating, acquiring, and protecting the rights to intellectual property consistent with Federal and State laws, Management & Operating Contract, and DOE rules, regulations and policies. Reviews Records of Invention (ROIs) for patentability, performs prior art searches and analyses, meets with innovators to discuss ROIs and related patent matters, and manages DOE reporting deadlines. Participates on an integrated team including members of the Technology Transfer Office and researchers to assess the technical, legal and business merits of innovations. Assists research staff with invention identification and serves as an expert resource to encourage timely and detailed invention reporting. Provides ongoing education and training sessions to management and staff on pertinent issues associated with the assigned IP portfolio, IP policies, patent laws and regulations, USPTO procedures, and issues related to software and copyrights. Proactively utilizes and is highly proficient with intellectual property, docketing and document management databases, USPTO’s PAIR database and EFS system, and foreign patent databases. Coordinates and oversees various responsibilities of assigned IP Administrators. Works closely with the IP Administrators to build a highly functional, mutually enriching team. Mentors other members of the IP team in areas of expertise. Supports the Technology Transfer Office with partnership formation and out-licensing of patents and software through assisting with the negotiation and review of agreements such as patent and software licenses, CRADAs, Strategic Partnership Project Agreements, Non-Disclosure Agreements (NDAs), Material Transfer Agreements (MTAs), and Agreements for Commercializing Technology (ACT). Provides IP due diligence surrounding transactional opportunities. Supports the Acquisition Services Office by providing counsel and review of IP provisions in procurement instruments and DOE-funded subcontracts. Supports the laboratory’s mission through the review and negotiation of procured software license agreements. Works closely with the DOE's Golden Field Office’s patent and general law attorneys, DOE's Chicago Operations Intellectual Property Law Division, and the DOE Headquarters Office of Assistant General Counsel for Intellectual Property, in the conduct of duties assigned, as required. As necessary, provides assistance and counsel related to diverse IP matters, including: reviews of publications, presentations, and reports before dissemination outside the laboratory copyright, trademark, and branding issues of the laboratory best routes to achieve laboratory business objectives with least amount of risk.

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