Intellectual Property Attorney
Company Name:
Oak Ridge National Laboratory
Located 20 miles from Knoxville in beautiful East Tennessee, ORNL is the Department of Energy's (DOE's) largest science and energy laboratory, employing a staff of more than 4,000 with funding in FY 2014 exceeding $1 billion. An international leader in a range of scientific areas that support DOE's mission, the Laboratory's four major areas of science and technology include neutron science, high performance computing, advanced materials, and nuclear science and engineering.
The Legal Directorate of Oak Ridge National Laboratory is searching for an intellectual property attorney to provide legal advice and assistance in all matters involving or affecting intellectual property across all levels and functions of ORNL, particularly those within the Office of Technology Transfer and Economic Development (TTED), one of the Legal Directorate's primary customers. The current intellectual property team consists of several patent agents and paralegals, a Senior Patent Attorney, and a Managing Attorney for intellectual property.
Job Duties and Responsibilities
The Intellectual Property (IP) Attorney oversees the work product of in-house patent agents and outside patent counsel to ensure that the work product satisfies the requirements of TTED in its commercialization efforts. The IP Attorney also assists with commercial transaction work, specifically supporting TTED in negotiating various technology transfer agreements with companies of all sizes, including cooperative research and development agreements, work-for-others agreements, user agreements, and license agreements, which sometimes contain equity provisions.
In addition, the Attorney ensures that the appropriate intellectual property terms and conditions are in all ORNL technology transfer, procurement and other contractual agreements. Also, the IP Attorney is required to provide general legal guidance to employees on intellectual property policies, procedures and practices.
Qualifications Required
JD Degree from an accredited law school with a minimum of 5 years of relevant experience.
Must be licensed and authorized to practice as an attorney in the State of Tennessee or the ability to obtain a license to practice law in the State of Tennessee.
Minimum of two years' experience in the preparation, writing and prosecution of patents (US and foreign).
A solid understanding of strategic patent filing, and who can participate in the creation of strategic patent portfolios that will be attractive to licensees.
Experience with commercial transaction work, including license agreements with start-up companies that contain equity provisions.
Experience working either in or with a highly regulated non-profit or government environment.
Active member of the patent bar.
Excellent communications skills and a strong desire to work in a team environment.
Strong interpersonal skills.
Desired
Experience:
At least 5 years' experience in the DOE patent system, either as a contractor attorney or Federal employee.
Clearance Requirement:
This position requires the ability to obtain and maintain a clearance from the Department of Energy. As such, this position is a Workplace Substance Abuse program (WSAP) testing designed position which requires passing a pre-placement drug test and participation in an ongoing random drug testing program in which employees are subject to being randomly selected for testing. The occupant of this position will also be subject to an ongoing requirement to report to ORNL any drug-related arrest or conviction or receipt of a positive drug test result.
Estimated Salary: $20 to $28 per hour based on qualifications.
Oak Ridge National Laboratory
Located 20 miles from Knoxville in beautiful East Tennessee, ORNL is the Department of Energy's (DOE's) largest science and energy laboratory, employing a staff of more than 4,000 with funding in FY 2014 exceeding $1 billion. An international leader in a range of scientific areas that support DOE's mission, the Laboratory's four major areas of science and technology include neutron science, high performance computing, advanced materials, and nuclear science and engineering.
The Legal Directorate of Oak Ridge National Laboratory is searching for an intellectual property attorney to provide legal advice and assistance in all matters involving or affecting intellectual property across all levels and functions of ORNL, particularly those within the Office of Technology Transfer and Economic Development (TTED), one of the Legal Directorate's primary customers. The current intellectual property team consists of several patent agents and paralegals, a Senior Patent Attorney, and a Managing Attorney for intellectual property.
Job Duties and Responsibilities
The Intellectual Property (IP) Attorney oversees the work product of in-house patent agents and outside patent counsel to ensure that the work product satisfies the requirements of TTED in its commercialization efforts. The IP Attorney also assists with commercial transaction work, specifically supporting TTED in negotiating various technology transfer agreements with companies of all sizes, including cooperative research and development agreements, work-for-others agreements, user agreements, and license agreements, which sometimes contain equity provisions.
In addition, the Attorney ensures that the appropriate intellectual property terms and conditions are in all ORNL technology transfer, procurement and other contractual agreements. Also, the IP Attorney is required to provide general legal guidance to employees on intellectual property policies, procedures and practices.
Qualifications Required
JD Degree from an accredited law school with a minimum of 5 years of relevant experience.
Must be licensed and authorized to practice as an attorney in the State of Tennessee or the ability to obtain a license to practice law in the State of Tennessee.
Minimum of two years' experience in the preparation, writing and prosecution of patents (US and foreign).
A solid understanding of strategic patent filing, and who can participate in the creation of strategic patent portfolios that will be attractive to licensees.
Experience with commercial transaction work, including license agreements with start-up companies that contain equity provisions.
Experience working either in or with a highly regulated non-profit or government environment.
Active member of the patent bar.
Excellent communications skills and a strong desire to work in a team environment.
Strong interpersonal skills.
Desired
Experience:
At least 5 years' experience in the DOE patent system, either as a contractor attorney or Federal employee.
Clearance Requirement:
This position requires the ability to obtain and maintain a clearance from the Department of Energy. As such, this position is a Workplace Substance Abuse program (WSAP) testing designed position which requires passing a pre-placement drug test and participation in an ongoing random drug testing program in which employees are subject to being randomly selected for testing. The occupant of this position will also be subject to an ongoing requirement to report to ORNL any drug-related arrest or conviction or receipt of a positive drug test result.
Estimated Salary: $20 to $28 per hour based on qualifications.
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