On behalf of our client, a nuclear technology company in US, we are looking for a Senior Patent Attorney. It’s a permanent position. Preferred location is based out of the Corvallis or Portland office, but the client may consider remote as long as you are open to travel.
Reporting to General Counsel, the Senior Corporate Counsel is responsible for assisting the Legal Department in the development, identification, and protection of the client’s intellectual property. It includes patents, software, trademarks, copyrights, trade secrets, and other intellectual property. The development, identification and protection of IP will include assessing the viability and feasibility of inventions, implementation of strategies for optimizing protection of IP. The attorney will assist in transactional work (sometimes taking the lead for IP-centric transactions), perform legal research, conduct corporate training, and aid in developing internal corporate processes.
Knowledge, Experience and Skills
- Manage the international patent portfolio that is core to the value of the company; manage outside counsel and control IP budgets
- Solicit invention disclosures and conduct patent harvesting efforts from engineering staff and conduct invention disclosure meetings
- Operate as the lead or support attorney for master service agreements (MSAs), sales contracts, strategic agreements, manufacturing agreements, non-disclosure/confidentiality agreements (NDAs), software-as-a-service (SaaS), and both inbound and outbound licensing contracts with numerous international and domestic companies
- Provide articulate legal advice to corporate board, executive and senior level business leadership for legal matters and business issues. Understand and advance the corporate strategy and support business requirements
- Engagement in investor, and mergers and acquisition (M&A) due diligence and government regulation for foreign investment
- Partner with the Export Controls Manager to assure compliance with all US export control laws and regulations through the implementation of compliance programs, policies, procedures
- Detect and respond to third-party infringement including Digital Millennium Copyright Act (DMCA) notices, social media, digital media, digital advertising, and domain name enforcement. Handle dispute resolution
- Responsible for the IP portion of multiple Department of Energy (DOE) co-operative agreements. Manage government relations. Negotiate with and regularly report to the DOE. Assure contractor flow-down requirement certification and compliance
- Other duties as assigned
- Education: A minimum of a Bachelor’s degree in a technical discipline (engineering preferred) from an accredited university is required. JD from an ABA-accredited university and active admission in good standing to at least one state bar (Oregon preferred) is required. Active admission in good standing to the USPTO as a patent practitioner strongly preferred.
- Experience: A minimum of eight years’ experience in patent preparation, filing, and prosecution for a relevant technology is required. Candidates should also have experience in the following:
- Experience working and collaborating with both in-house and outside counsel is required.
- Demonstrable expertise in all aspects of patent preparation and prosecution is required.
- Evidence of self-confidence, with the ability to take the initiative and to be self-motivated is required.
- Significant experience in patent preparation and prosecution in the software arts and nuclear arts strongly desired.
- Must be admitted and active in good standing to an United States Bar Association (Oregon preferred). Registered to practice before the US Patent & Trademark Office (USPTO) is strongly preferred.
- Other knowledge strongly preferred is an in-depth understanding of software, mechanical, electrical and nuclear engineering concepts, principles, and theories.
- Industry Requirements: Eligible to work under Department of Energy 10 CFR Part 810.
- Quality Assurance: Demonstrated understanding and implementation of quality assurance regulations, standards and guidelines of 10 CFR 50 Appendix B, 10 CFR 21, and NQA-1 preferred.