Chief Patent Counsel

at Argonne National Laboratory in Lemont, Illinois, United States

Job Description

Argonne National Laboratory (Argonne or ANL) is seeking a Chief Patent Counsel with a strong business partnership mindset for our Legal Department. You will join a team of nine attorneys and five support staff and report to our General Counsel in support of the mission and operation of a U.S. Department of Energy National Laboratory. We are seeking a highly experienced and skilled attorney to provide legal advice and counsel concerning a wide range of intellectual property (IP) and technology matters, in particular with regard to patents, IP protection and prosecution, consistent with the Prime Contract and existing law.

This position will deliver the following:

Accountabilities :

+ Work with the ANL General Counsel and Science & Technology Partnerships and Outreach (S&TPO) personnel, DOE attorneys, other ANL attorneys and legal staff to advise ANL management and staff on matters involving intellectual property protection and prosecution

+ Identify, report and protect intellectual property developed at Argonne

+ Assist in the evaluation of new inventions and software to determine patentability, commercial potential and programmatic value

+ Initiate patent applications and prosecute patents, trademarks and copyrights when in the best interests of the lab

+ Develop Laboratory policies, procedures, and initiatives related to intellectual property; assist Science & Technology Partnerships and Outreach (S&TPO) personnel and others in educating and training ANL personnel relative to identifying and protecting intellectual property

+ Conduct patent searches to assist in the evaluation of reported inventions.

+ Review Laboratory publications for unreported inventions

+ Ensure that prime contract requirements are met vis-à-vis intellectual property.

+ In collaboration with ANL inventors and authors, prepare and distribute invention and software reports

+ Remain abreast of changes in DOE requirements and U.S. and foreign laws related to patent, trademark and copyright protection

+ Prepare assignments, waiver petitions, copyright approval requests and other documents required to acquire and protect rights in intellectual property developed at the Laboratory, in accordance with the prime contract and DOE regulations

+ Represent the Laboratory in matters before administrative bodies and the Courts or supervise outside counsel in those matters

+ Review documents for patent clearances

+ Develop and maintain relationships with multiple internal and external stakeholders which will include the Department of Energy (DOE), prospective partners, subcontractors and officials from various government agencies

+ Depending upon experience and need, may manage outside counsel engaged in the protection of IP assets, e.g., patent filing and prosecution, trademark, and copyright as well as outside counsel that is engaged to provide advice and counsel concerning the full spectrum of IP and technology matters; manage budgets accordingly.

+ May be required to identify and address potential conflicts of interest, draft related mitigation plans and otherwise support the lab community in preparing funding proposals and accepting work from sponsors

+ Draft, negotiate and provide legal advice and counsel concerning the full spectrum of technology related agreements, including: 1) Cooperative Research and Development Agreements (CRADAs), 2) Strategic Partnership Projects Agreements (SPPs), 3) Memoranda of Understanding (MOUs), 4) Consortium Agreements, 5) Membership Agreements, 6) License Agreements (including software license), 7) Non-Disclosure Agreements (NDAs)

+ Perform other duties, including practice in multiple areas of law, as necessary to support the mission of the Laboratory.

Position Requirements

Minimum Job Requirements :

+ Law Degree from an ABA accredited law school

+ Admitted to practice law in the State of Illinois or eligible for a limited practice license in Illinois as in-house counsel

+ At least ten (10) years of relevant experience as an intellectual property attorney, with experience specific to patents, copyrights and trademarks

+ Registration as a Patent Attorney with the U.S. Patent & Trademark Office

+ Demonstrated oral, written, interpersonal communication and negotiation skills.

Desired Qualifications :

+ Familiarity with DOE policies, procedures, and orders pertaining to the protection of intellectual property, technology transfer, classification and national security (10 CFR 1045 or Executive Order 13526), privacy and data protection

+ Experience with NIST cybersecurity standards, guidelines and best practices

+ Familiarity with software technologies and applications used in a tech savvy legal office and technology transfer function

+ Familiarity with IP provisions and terms pertaining to the Lab’s procurements

+ Familiarity with human subjects research compliance/IRB regulations

+ Experience in IP litigation/disputes including strategy development

+ Experience reviewing work of legal assistants/paralegal and other professionals

+ Ability to acquire and maintain a DOE “Q” level security clearance

+ Experience providing legal support to a Privacy Program.

Job Family

Professional Administrative (PA)

Job Profile

Attorney 6

Worker Type

Regular

Time Type

Full time

As an equal employment opportunity and affirmative action employer, and in accordance with our core values of impact, safety, respect, integrity and teamwork, Argonne National Laboratory is committed to a diverse and inclusive workplace that fosters collaborative scientific discovery and innovation. In support of this commitment, Argonne encourages minorities, women, veterans and individuals with disabilities to apply for employment. Argonne considers all qualified applicants for employment without regard to age, ancestry, citizenship status, color, disability, gender, gender identity, gender expression, genetic information, marital status, national origin, pregnancy, race, religion, sexual orientation, veteran status or any other characteristic protected by law.

Argonne employees, and certain guest researchers and contractors, are subject to particular restrictions related to participation in Foreign Government Sponsored or Affiliated Activities, as defined and detailed in United States Department of Energy Order 486.1A. You will be asked to disclose any such participation in the application phase for review by Argonne’s Legal Department.

All Argonne offers of employment are contingent upon a background check that includes an assessment of criminal conviction history conducted on an individualized and case-by-case basis. Please be advised that Argonne positions require upon hire (or may require in the future) for the individual be to obtain a government access authorization that involves additional background check requirements. Failure to obtain or maintain such government access authorization could result in the withdrawal of a job offer or future termination of employment.