Description:

A Government Entity is seeking an Intellectual Property (IP) Attorney with a strong business partnership mindset for our Legal Department. You will join a team of eight attorneys and six 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 IP and technology matters including, technology transfer and commercialization, conflicts of interest, data privacy, cyber security, artificial intelligence and large language model learning, among others.

This new position will deliver the following:
  • Advise the General Counsel, Senior Leadership and other Laboratory personnel in areas of legal specialization primarily involving the protection, transfer and commercialization of intellectual property.
  • 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 agreements); 7) Technical Assistance Agreements; 8) Non-Disclosure Agreements (NDAs); 9) Intellectual Property Agreements (IPAs); 10) Facility Use Agreements (FUAs); and 11) Data Use Agreements (DUAs).
  • Additionally, draft memoranda of law, legal opinions, policy, and other documents related to intellectual property matters; provide legal advice and counsel to management and employees regarding the legal aspects and consequences of proposed transactions and courses of action in furtherance of the Laboratory's mission.
  • Advise on the meaning and application of Department of Energy (DOE) Prime Contract, legal, regulatory, and other government requirements under the general guidance of the General Counsel.
  • Represent the Laboratory in matters before administrative bodies and the Courts
  • 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 be asked to 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.
  • Perform other duties, including practice in multiple areas of law, as necessary to support the mission of the Laboratory.

Position Requirements:
Minimum 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 seven (7) years of relevant experience as an intellectual property attorney
  • 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.
  • Experience providing legal support to a Privacy Program.
  • Ability to acquire and maintain a DOE "Q" level security clearance.