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Patent Agent, Lawrence Berkeley National Laboratory- Technolgoies Transfer Divsion

5-9-2008

Lawrence Berkeley National Laboratory (LBNL is located in the San Francisco Bay Area on a 200-acre site in the hills above the University of California 's Berkeley campus and is managed by the University of California for the U.S. Department of Energy.  A leader in science and engineering research for 75 years, Berkeley Lab is the oldest of the U.S. Department of Energy's national laboratories. LBNL offers its employees career and term appointments excellent terms and conditions of employment, outstanding health and welfare benefits, and programs for a secure retirement that are considered to be among the finest.

The Technology Transfer and Intellectual Property Management (TTIPM) Department, is seeking an experienced Patent Agent. The candidate will be expected to independently prepare and prosecute patents primarily in the field of physics, material science and engineering. The incumbent is responsible for planning and executing patent strategies for assigned intellectual property caseload, which may include in-house work and management of external counsel.

Summary:

Preparing and filing patent applications duties:

  • Conducting preliminary patent searches
  • Reviewing proposed publications for issues of patentability
  • Drafting patent applications, using the invention disclosure, other documents, and interviews with the inventors
  • Coordinating work of external counsel on assigned cases
  • Reviewing associated legal bills for accuracy, reasonableness and compliance with requirements

Prosecuting patents duties:

  • Reviewing Office Actions/Examiner Reports from governmental Patent Office
  • Assessing patentability issues
  • Preparing arguments or claim amendments responsive to the Office Actions/Examiner Reports
  • Coordinating work of outside counsel on assigned cases

Document review duties:

  • Evaluating invention disclosures and interact with scientists/inventors to monitor for developments
  • Reviewing licenses and other agreements
  • Evaluating university rights relative to new inventions
  • Conducting patent infringement analyses and evaluating contract provisions
  • Interacting with Lab Management, outside management, and attorneys on assigned negotiations
  • Providing oversight activities of outside counsel in these areas as assigned

The incumbent will also be expected to providing collegial advice and review to fellow patent practitioners.

Qualifications:

Key success factors include:

  • Bachelor's or an advanced degree in science or engineering and a minimum of 5 - 8 years of related experience practicing patent law; or an equivalent combination of educations and experience
  • Demonstrated knowledge of patent law along with strong proficiency in patent preparation, prosecution, and enforcement
  • Must be registered to practice before the U.S. Patent and Trademark Office, with relevant experience practicing patent law
  • Ability to manage a number of complex cases
  • Demonstrated effective negotiation skills, technical proficiency in assigned scientific area, and the demonstrated ability to independently identify and resolve a variety of complex problems

Advanced degree (M.S. or Ph.D.) in physics or materials science or related scientific disciplines strongly preferred. Knowledge of LBNL/DOE/UC regulations is desirable.

LBNL is an Equal Opportunity/Affirmative Action employer.

Come work directly with world class scientists exploring the cutting edge of the newest fields. The University of California 's Lawrence Berkeley National Laboratory seeks a Patent Agent with 5 or more years of experience in patent preparation and prosecution in the physical sciences, especially physics, materials science or nanotechnology. Excellent communications and interpersonal skills required. We also offer a flexible team-oriented work environment on a beautiful site, with excellent benefits.

To view a full job description and to apply on-line, please visit our website at:

http://jobs.lbl.gov/ or send your resume and cover letter directly to Bill Singh at bsingh@lbl.gov

Berkeley Lab is an Affirmative Action/Equal Opportunity Employer committed to the development of a diverse workforce.

 

 
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