Pacific Northwest National Laboratory (PNNL), a nationally and internationally recognized research and development lab based in Washington State, is looking for a Sr. Patent Attorney to work in our Richland, Washington office (Job ID: 300347).
This is a great opportunity to work with a one-billion dollar government institution that is making a difference in advancing science and helping solve some of the world's toughest challenges in energy, environment and national security. PNNL was recently honored in Washington’s Best Places to Work competition, sponsored by the Puget Sound Journal of Business. We offer an array of benefits including tuition reimbursement plans, excellent health insurance and robust relocation packages.
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 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.
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.
Responsibilities & Accountabilities:
The Senior Patent Attorney will be expected to independently perform all aspects of a highly experienced patent attorney in a challenging and dynamic professional environment. This position would be roughly equivalent to an equity partner position in an intellectual property law firm. The incumbent will work on a variety of projects while addressing walk-in issues from management and staff. The Senior Patent Attorney will provide comprehensive legal advice and services at an expert level in all areas of intellectual property law including but not limited to patents, copyrights, trademark, and trade secrets. Legal advice and services rendered in these areas may be applied to activities such as perfecting rights in intellectual property of all forms, revenue producing transactions involving intellectual property, litigation, and client counseling.
The Senior Patent Attorney will be a trusted advisor to all levels of PNNL and Battelle management and staff. This position will provide legal advice and services for day-to-day activities, corporate strategic initiatives, and everything in between. The incumbent will also serve as a resource for IPLS staff requiring guidance and mentoring to deliver high value legal solutions to customers. The Senior Patent Attorney will have the ability to grasp, articulate, and frame legal advice and services within the context of and in alignment with PNNL and Battelle strategy and prudent risk thresholds. Accordingly, the Senior Patent Attorney must identify high risk issues and then work with PNNL and Battelle management and staff to develop and implement creative, cost effective legal solutions to mitigate risk. Failure to positively influence managerial and staff decision making to effectively mitigate known and foreseeable risks will most likely result in negative impacts to Battelle’s ability to accomplish major strategic initiatives, comply with 1830 Contract requirements, and meet fiscal goals and objectives.
The Senior Patent Attorney will face numerous challenges when representing Battelle’s intellectual property interests. Most notably, the Senior Patent Attorney will be challenged to:
• Provide cost effective, timely, and creative legal solutions to assist Battelle management and staff in the fulfillment of the PNNL mission;
• Establish and maintain a positive rapport with all levels of PNNL and Battelle management and staff that will allow open communication and proactive legal action to minimize the potential for mission or project interruption and promote management and staff confidence in in-house legal resources;
• Provide considered legal advice with little opportunity to conduct legal research to support the basis for a legal position;
• Maintain currency with changes in intellectual property law and work with IPLS staff so they understand the implications of precedent on the conduct of their duties;
• Communicate complex intellectual property legal concepts and principles in a manner that non-lawyers will understand and comply with; and
• Maintain an understanding of intellectual property law and relevant technologies that will allow prompt if not immediate analysis of complex fact patterns and issues involving mixed questions of law and fact.
• Independently assess and balance client priorities to meet customer demand for legal services in view of PNNL and Battelle long range goals and objectives in a timely and cost effective manner with little or no direct supervision.
Significant Roles of Senior Patent Attorney:
Fulfilling the Senior Patent Attorney’s responsibilities to the intellectual property identification and protection process at a national laboratory requires a detailed knowledge of: (i) patent, copyright, and trademark law; and (ii) the requirements for technical information, inventions and the patent application process imposed by the U.S. Government (particularly the Department of Energy) through statutes, regulations, contracts, orders, and procedures. This position requires that the incumbent have the knowledge and credibility to retain and direct the activities of numerous outside counsel, Technology Commercialization management and staff, research management and staff, and Battelle management at PNNL and elsewhere.
The incumbent will be considered by Battelle management as an “expert” with regard to the handling and management of the patent process for inventions and Subject Inventions conceived or first actually reduced to practice by PNNL staff. The incumbent will have a comprehensive and thorough understanding of the theory and principles associated with the practice of intellectual property law. The incumbent will function as an individual contributor in matters relating to intellectual property law but may provide input to IPLS managerial issues including preparation of Staff Development Reports (SDRs) for IPLS staff.
Some of the specific activities that the Senior Patent Attorney will be responsible for include but are not limited to: (1) participating in the day-to-day Battelle intellectual property protection functions (with particular emphasis on invention identification, reporting and patent procurement) in a national laboratory environment; (2) mentoring and training patent attorneys and patent agents in the conduct of these functions; (3) providing the IPLS Manager and Managing Patent Attorney with performance feedback for IPLS staff SDR reviews; (4) working with Battelle senior management to develop and implement intellectual property protection strategies for PNNL and Battelle; (5) interacting with legal, technical, and senior level management at other Battelle facilities to assist with the design and implementation of corporate intellectual property strategy; (6) educating PNNL staff regarding intellectual property protection obligations and procedures; (7) providing advice and counsel to internal staff and external clients (with particular emphasis on the PNNL Technology Commercialization staff). This position plays a critical role in achieving the strategic intellectual property goals and objectives of Battelle and PNNL and is critical to secure protection of Battelle’s and PNNL’s intellectual property, ensure successful deployment of Battelle intellectual property, and comply with Battelle’s 1830 and 1831 contracts.
The overall job scope will include but will not be limited to:
• Mentoring and training PNNL staff in the identification and procurement of invention reports and patents thereon;
• Advice and counsel Battelle management in Columbus and other Battelle facilities regarding the rights of Battelle and the U.S. Government in intellectual property generated at a Battelle managed or co-managed laboratory;
• Advice and counsel PNNL management and customers regarding rights in intellectual property generated at PNNL and the process for protecting such intellectual property;
• Coordination with the PNNL Legal Department Manager on general legal issues including litigation that involve Battelle’s intellectual property;
• Interaction and coordination with the Battelle Intellectual Property Legal Department in Columbus;
• Retention and management of outside legal counsel;
• Assist with the design and implementation of an intellectual property education program for PNNL management and staff;
• Maintain communications and positive working relationships with Department of Energy legal staff including but not limited to the DOE-HQ Assistant General Counsel for Intellectual Property and the DOE-ORO and DOE-BSO patent attorneys that provide oversight for PNNL intellectual property and technology transfer issues;
• Maintain communications and positive working relationships with oversight personnel at DOE-PNSO to promote their confidence in Battelle’s ability to manage PNNL in compliance with its obligations under the management and operating contract;
• Maintain productive relationships with peers at other DOE national laboratories including national laboratories that are managed or co-managed by Battelle;
• Mentor IPLS patent lawyers, patent agents, and legal coordinator; and
• Individual contributions including but not limited to drafting and prosecuting domestic and foreign patent applications.
The Senior Patent Attorney is a key participant in the IPLS intellectual property identification and protection functions at PNNL. This includes mentoring and training patent attorneys, patent agents, legal coordinators (paralegals), support staff, and retained outside counsel. The incumbent will be responsible for providing the IPLS Manager and the Managing Patent Attorney with input for periodic and annual professional performance feedback and annual SDRs for IPLS staff.
This position retains and manages the work product of numerous retained outside firms in the procurement of patents in both the U.S. and foreign patent offices, both as to quality, timeliness, budget and the relationship/interaction with Battelle staff.
This position interacts with Department of Energy patent attorneys in Oak Ridge, Tennessee, San Francisco, California, and Washington, D.C. and with oversight personnel in the Pacific Northwest Site Office regarding the identification of IP and procurement of patents thereon, both in matters of policy and also implementation of policy/regulations/statutes.
This position works with Battelle corporate patent staff in Columbus to resolve intellectual property legal issues having relevance multiple Battelle corporate interests contribute to the development and implementation of corporate policy, assist with corporate issues that impact PNNL.
This position routinely works with the PNNL Technology Commercialization staff to develop and implement practices and procedures for identification and protection of intellectual property at PNNL.
This position prepares and prosecutes domestic and foreign patent applications and serves as a mentor and trainer for other practitioners that need to develop preparation and prosecution skills.
• Undergraduate degree in a natural science or engineering discipline;
• Advanced degree in a natural science or engineering discipline is preferred 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 10 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 there under;
• 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.
Juris Doctorate plus 10 years of related experience. Bachelor’s degree in a natural science or engineering discipline.
Advanced degree in a natural science or engineering discipline is preferred.
Position requires ability to obtain multiple Security Clearances
Apply online by visiting http://www.jobs.pnl.gov and searching for Job ID 300347.
Employer Type: Government
Job Location: Richland, Washington
About Pacific Northwest National Laboratory
Pacific Northwest National Laboratory is a Department of Energy laboratory, reporting to the Office of Science. PNNL advances the fundamental understanding of complex chemical, physical and biological systems and provides science-based solutions to some of the nation’s most pressing challenges in national security, energy and the environment. We accomplish this mission through the outstanding research and development activities of our staff, excellence in operations and high-value partnerships. PNNL has approximately 4,600 researchers and staff located at the main campus in Richland, Wash., the Sequim Marine Research Operations facility in Sequim, Wash., and at offices in Seattle, Wash., Portland, Ore., and Washington, D.C. Battelle, a global science and technology enterprise headquartered in Columbus, Ohio, manages the laboratory for DOE.