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Patent Attorney

Company Name:
BITSOFT INTERNATIONAL, INC.
The National Renewable Energy Laboratory (NREL), located in beautiful Golden, CO, is a leader in the U.S. Department of Energys effort to secure an energy future for the nation that is environmentally and economically sustainable.Our mission is to develop renewable energy and energy efficiency technologies and practices, advance related science and engineering and transfer knowledge and innovations to address the nations energy and environmental goals.
Patent Attorney
Requisition #3609BR
About NREL
The National Renewable Energy Laboratory (NREL) is a leader in the U.S. Department of Energys effort to secure an energy future that is both environmentally and economically sustainable. With locations in Golden, Boulder and Washington D.C., NREL is the primary laboratory for research, development and deployment of renewable energy technologies in the United States. The NREL mission is to develop renewable energy and energy efficient technologies and practices, advance related science and engineering, and transfer knowledge and innovation to address the nations energy and environmental goals.
Job/Research Summary
The individual holding this position will report to the Deputy General Counsel and work under a Team Leaderthe Associate General Counsel - Intellectual Property to handle patent and intellectual property matters as assigned, and provide advice and services to NREL management, laboratory staff, the U.S. Department of Energy (DOE), and subcontractors at all levels. This position is responsible for interacting directly with all levels of management, both internal and external.
Job Duties
The successful candidate supports the timely drafting, prosecution and protection of the laboratorys domestic and foreign photovoltaic and materials sciences patent docket.
Works with NREL staff and laboratory clients in evaluating, acquiring, and protecting the rights to intellectual property consistent with Federal and State laws, the Management Operating Contract, and NREL and DOE rules, regulations and policies.
Provides counsel related to the review and clearance of the laboratorys publications and software licensing agreements, the review of procurement instruments in support of the Contracts and Business Services Office, and the review of a wide range of agreements in support of the Technology Transfer Office, including the licensing and technology transfer activities, negotiating NDAs and MOUs, Work for Others agreements, CRADAs, Material Transfer Agreements, and Agreements for Commercializing Technology (ACT) Agreements.
Works closely with the DOEs Golden Field Office, DOEs Chicago Operations Intellectual Property Law Division, and the DOE Headquarters Office of Assistant General Counsel for Intellectual Property, in the conduct of duties assigned, as required.
Ensures that commercially important inventions are protected by valid patents; directs the activities associated with appeal and interference proceedings; renders opinions regarding infringement and validity of patents; and conducts and evaluates state-of-the-art searches as necessary.
Retains and manages outside counsel in the preparation and prosecution of patent applications and as needed ad-hoc opinions.
Provides ongoing training to management and staff on pertinent issues associated with NREL intellectual property.
Manages the provision of support to laboratory stakeholders, including IP due diligence surrounding transactional opportunities, negotiation and contract drafting support.
Provides intellectual property reviews of publications, papers, documents and manuscripts proposed for dissemination by the laboratory.
Proactively utilizes, measures, and suggests improvements in the utilization of NREL intellectual property database and other processes.
Provides counsel related to copyright, trademark and branding issues of the laboratory.
Coordinates and oversees various responsibilities of assigned Patent Administrators.
Required Education and Experience
Relevant Bachelors Degree and 5 or more years of experience or equivalent relevant education/experience.
Or, relevant Masters Degree and 3 or more years of experience or equivalent relevant education/experience.
Or, relevant PhD or equivalent relevant education/experience.
Or, relevant JD or equivalent relevant education/experience.
Required Knowledge, Skills and Attributes
Complete understanding and wide application of technical principles, theories and concepts in the field. General knowledge of other related disciplines.
Considerable knowledge of laws, regulations, principles, procedures and practices related to specific field. Strong leadership, project management and problem solving skills. Ability to use various computer software programs.
Additional Required Knowledge, Skills and Attributes
Bachelors degree in electrical engineering, physics, materials science, mechanical engineering or related field from an accredited four-year college or university. JD degree from an ABA approved school, admission to a State Bar and registration to practice before the U.S. Patent and Trademark Office. Must be a current member of the Colorado Bar, or eligible for immediate admission on motion to the Colorado Bar based upon years of past experience. At least three (3) years of solid patent preparation and prosecution experience.
General understanding and wide application of technical principles, theories and concepts in the field. General knowledge of other related disciplines.
A working knowledge of laws, regulations, principles, procedures and practices related to specific field. Strong leadership, project management and problem solving skills. Ability to use various computer software programs.
Demonstrated experience drafting patent applications and amendments in diverse technical fields related to the business of the laboratory. In-house experience is a plus.
Technical and specific experience in the area of solid state or semiconductor physics.
Preferred Qualifications
Excellent technical, verbal, and written communications skills. Ability to work cooperatively (with a staff of attorneys, patent agents, paralegals and other support staff) in a fast-paced, dynamic team environment and communicate effectively with visitors, outside counsel, and NREL employees, including educating other NREL employees and management on intellectual property related issues.
Must be detail-oriented with excellent organizational skills, able to multi-task, and be able to work independently. Knowledge of federal procurement, government regulations, and general corporate law is highly desirable.
EEO Policy / E-Verify
NRELs policy is to provide equal employment opportu...

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