Sandia National Laboratories is searching for a Patent Prosecution Attorney for the Legal Technology Transfer Center for the Albuquerque facility. Must be able to obtain and maintain a DOE Security Clearance.
The selected candidate will provide legal advice and assistance in all matters involving or relating to intellectual property issues. This attorney will lead Sandia patent preparation and prosecution activities including in-house patent preparation and prosecution and management of outside patent counsel. He or she will provide legal counseling on intellectual property issues, policies, and procedures. The attorney will work with divisions researching silicon processing and fabrication of compound semiconductors including micro-electromechanical systems (MEMS), contour-mode resonators, silicon and III-V photonics (including VCSELs, ring resonators, all-optical logic, solar cells, infrared focal plane arrays), analog and digital circuits, semiconductor fabrication and packaging, and failure analysis techniques.
This position provides legal services to protect, enforce, and mitigate risk associated with intellectual property. Provides advice and counsel on patent prosecution matters, including patentability of inventions, obviousness, prior art, and scope of patent claims. Drafts patent and trademark applications, advises on all types of intellectual property reviews, licensing and research agreements, publications, and intellectual property aspects of contracts. Provides Sandia National Laboratories with legal advice and services concerning legal rights, obligations, and privileges in matters involving intellectual property law. Coordinates legal matters handled by outside counsel and manages litigation.
Primary Job Duties:
• Provides legal advice and services concerning rights, obligations and privileges of Sandia in matters involving intellectual property law.
• Interprets and prepares legal documents, analyzes corporate policies, and advises corporation in areas of intellectual property law.
• Prepares, files, and prosecutes patent applications to obtain the broadest possible protection for Sandia's inventions, consistent with Sandia's business needs.
• Counsels, advises and supports licensing and technology transfer staff in transactional matters.
• Provides legal advice on agreements pertaining to intellectual property, including patent and copyright license agreements and other technology transfer agreements.
• Advises on patentability of inventions developed by Sandia.
• Monitors and reviews Sandia publications for creation of statutory bar dates for Sandia inventions.
• Conducts prior art searches.
• Coordinates discussions with line management, technical staff, and technology transfer staff to select and prioritize invention disclosures and efficiently support Sandia's business needs.
• Manages the preparation and prosecution of foreign and domestic patent applications by outside counsel.
• Coordinates joint patent applications with co-inventing outside organizations.
• Renders opinions regarding possible patent infringements.
• Handles appeal and interference proceedings, as required.
• Supports other legal staff in litigation matters, as needed.
• May act as an agent of the corporation in various transactions.
Knowledge, Skills & Abilities:
• Registered to practice before the United States Patent and Trademark Office and licensed to practice law in at least one state.
• Recent and relevant technical and legal background, including preparation and prosecution experience in Physics, Electrical Engineering, Materials Science or other relevant engineering discipline.
• Excellent written and oral communication skills and interpersonal skills.
• Knowledge of federal law and U.S. Department of Energy policies, procedures, and orders regarding management of patent, copyright, technical data, technology transfer agreements, and acquisition policies and procedures.
• Knowledge of contractual mechanisms, including cooperative research and development agreements, Work for Others, licenses and options, statements of work, user facility, and non-disclosure agreements.
• Experience in licensing and other technology transfer agreements.
• Skill in and knowledge of the concepts and processes involved in preparing for negotiations, conducting negotiations, and counseling a client regarding developments and options in a negotiation.
• Knowledge of the tools of legal research and the ability to devise and implement coherent and effective legal research plans.
• Skill in and knowledge of the concepts and processes involved in preparing for negotiations, conducting negotiations, and counseling a client regarding developments and options in a negotiation.
• Knowledge of the rules governing the practice of law, the ability to recognize and resolve ethical issues, and strict adherence to attorneys' rules of confidentiality.
• Knowledge of software applications and technologies used in a technologically sophisticated law office.
• Ability to identify legal exposures to business goals that are broader than the exposures implicit in the literal scope of a request for legal advice.
• Ability to work independently as appropriate.
Required:
• A U.S. law degree from an ABA accredited law school, admission to practice in at least one U.S. state and current registration with the USPTO is required, plus, 4-8 years of experience; or equivalent combination of education and experience.
• Excellent academic qualifications with 4-8 years of law firm and/or in-house experience in patent prosecution.
• Degree in Physics, Electrical Engineering, Materials Science or other relevant engineering discipline.
Desired:
• Masters or PhD level education is preferred. Excellent analytical, interpersonal and communication skills are needed.
• Candidates should have strong project, and client management skills and a proven track record of success in the patent field.
Contact:
Please apply online at http://www.sandia.gov/careers/search-openings.html, click Advanced Search and reference Job Opening ID Number: 641106.
U.S. Citizenship Normally Required. Equal Opportunity Employer. M/F/D/V.
Additional Info:
Employer Type: Government
Job Location: Albuquerque, New Mexico
Sandia National Laboratories is the nation's premier science and engineering lab for national security and technology innovation with major facilities in Albuquerque, New Mexico and Livermore, California. We are a world-class team of scientists, engineers, technologists, post docs, and visiting researchers all focused on cutting-edge technology, ranging from homeland defense, global security, biotechnology, and environmental preservation to energy and combustion research, computer security, and nuclear defense. To learn more, please visit our website at www.sandia.gov.
