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Patent Attorney RESPONSIBILITIES: The candidate will assists with the review, evaluation, and implementation of patent legal office standard operating procedures and document flow. Reviews and analyzes invention disclosure submittal and administrative processes, and assists with preparation for monthly Invention Evaluation Committee meeting. Reviews and analyzes patent and licensing database operation and implementation. Reviews and analyzes management of active and archived patent cases. Serves as in-house administrative patent trouble-shooter working problem issues and contributing suggestions to improve business operations. Assists with tasks involved in creating and maintaining patent portfolios for licensure and other commercialization activities. Fields general questions relating to intellectual property issues from the ORTA group, in-house attorneys and support staff, contractor/consultant patent attorneys and agents, and scientists. Counsels scientists regarding matters relevant to protection of intellectual property rights; their obligations to report inventions; risks regarding disclosure, use and/or publication of information related to inventions; guidance regarding preparation and submission of complete invention disclosure packages; rights determination issues, etc. Fields questions relating to licensing of patents for in-house attorneys and support staff, contractor/ consultant patent attorneys and agents, and scientists. Performs status checks on inventions and patents being marketed and Counsels representatives, in-house attorneys and support staff, contractor/ consultant representatives, patent attorneys and agents, and scientists regarding matters relevant to the application of the Bayh-Dole Act to inventions made under federal funding agreements such as contracts, grants and cooperative agreements. Provides information regarding treatment of inventions made under Cooperative Research and Material Agreements (CRADAs). Conducts legal research on various intellectual property and technology transfer topics/issues and prepares and provides memoranda/analyses relating to these topics, including patent law, patent prosecution, inventorship, patent licensing, rights in inventions, etc. Assists in assembling, updating and monitoring contents of patent/technology file wrappers. Assists in preparation of Invention Evaluation Committee (IEC) agenda and background summaries and provides invention processing reports and analyses. Obtains copies of patents, file histories, and assignment records. Provides copies of relevant prior art and other documents evaluated in the course of reviewing the relevant scientific and technical literature or rendering patentability determinations.
Qualification and Experience
REQUIREMENTS : The candidate should have a BS, MS, and/or PhD degree in Science (or related field). Juris Doctor (J.D.) from an Accredited Law School. Maryland State Bar Certified and Licensed Attorney. USPTO Patent Bar Certified. Must be specialized in the specific areas of science: life science and technology (i.e. Biology, Chemistry, Physics, Engineering). Experience in working with Department of Defense US Army. Familiar with the Bayh-Dole Act, Federal Acquisition Regulation (FAR) Part 27, and the Federal Technology Transfer Act (FTTA). Security Clearance desired.
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