Senior Managing Counsel, Intellectual Property

12-12 yrs required

Full-time

No

# Senior Managing Counsel, Intellectual Property

Sandia National Laboratories is looking for a Senior Managing Counsel to lead its Intellectual Property Law team. This is a full-time, regular position based in Albuquerque, New Mexico. The successful applicant must have a law degree from an ABA accredited law school and active bar membership, and must be able to acquire and maintain a DOE-Q-level security clearance along with an SCI clearance, which may require a polygraph test.

## About Sandia

Sandia National Laboratories is the nation’s premier science and engineering lab for national security and technology innovation, with teams of specialists focused on cutting-edge work in a broad array of areas. We offer challenging work with amazing impact that contributes to security, peace, and freedom worldwide. Our employees enjoy extraordinary co-workers, some of the best tools, equipment, and research facilities in the world, career advancement and enrichment opportunities, flexible work arrangements, generous vacation, strong medical and other benefits, competitive 401k, learning opportunities, relocation assistance, and amenities aimed at creating a solid work/life balance. Learn more about Sandia at:

## What Your Job Will Be Like

The Senior Managing Counsel will lead, manage, and mentor a team of attorneys and legal professionals within the organization, including hiring, professional development, and performance management. They will advise other attorneys and all levels of management on matters involving intellectual property law, manage litigation and oversee litigation budgets and strategy, interact with the broader DOE/NNSA community to represent and advocate for NTESS, LLC’s interests in service of Sandia’s overall mission, and provide advice and counsel on patent prosecution matters, including patentability of inventions, obviousness, prior art, and scope of patent claims. They will also prepare, file, and prosecute patent applications to obtain the broadest possible protection for Sandia's inventions, counsel, advise, and support licensing and technology transfer staff in transactional matters, provide legal advice on agreements pertaining to intellectual property, including patent and copyright license agreements and other technology transfer agreements, advise on patentability of inventions developed by Sandia, monitor and review Sandia publications for creation of statutory bar dates for Sandia inventions, coordinate discussions with line management, technical staff, and technology transfer staff to select and prioritize invention disclosures and efficiently support Sandia’s business needs, coordinate joint patent applications with co-inventing outside organizations, render opinions regarding possible patent infringements, provide legal guidance on organizational conflict of interests, and technical personal conflict of interests.

## Qualifications We Require

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- Excellent academic qualifications with 12 or more years of law firm and/or in-house experience in licensing and technology transfer as well as patent prosecution.
- Ability to acquire and maintain a DOE-Q-level security clearance along with an SCI clearance, which may require a polygraph test.

## Qualifications We Desire

- Five or more years of managerial experience including leading and directing attorneys and legal staff.
- Ability to foster a culture of inclusion and take an active leadership role in modeling and growing values in diversity, equality, and inclusion.
- Strong emotional intelligence and the ability to act as an ambassador and leader within the intellectual property law area for Sandia across the DOE/NNSA complex.
- Demonstrated ability to manage multiple tasks and changing priorities, mediate conflict, and apply leadership concepts and techniques.
- Registered to practice before the United States Patent and Trademark Office
- Recent and relevant technical and legal background, including preparation and prosecution experience in engineering, mathematics, biological sciences, or computer sciences.
- Knowledge of federal law and . Department of Energy/National Nuclear Security Administration policies, procedures, and orders regarding management of patent, copyright, technical data, technology transfer agreements, and acquisition policies and procedures.
- Knowledge of contractual mechanisms, including cooperative research and development agreements, strategic partnerships programs, licenses and options, statements of work, user facility, and non-disclosure agreements.
- Skill in and knowledge of the concepts and processes involved in preparing for negotiations, conducting negotiations, and counseling a client regarding developments and options in a negotiation.
- Knowledge of the tools of legal research and the ability to devise and implement coherent and effective legal research plans.
- Knowledge of software applications and technologies used in a technologically sophisticated law office.
- Ability to identify legal exposures to business goals that are broader than the exposures implicit in the literal scope of a request for legal advice.
- Integrative thinker with proven ability to tackle complex, multi-faceted problems with due consideration for business and strategic consequences.
- Ability to distill complex legal issues down into succinct, actionable advice and analyses for internal client representatives and stakeholders.
- Ability to engage in quantitative risk analysis and communicate advice in a manner that is maximally useful to clients.
- Demonstrated ability to interact effectively with all levels of internal and external customers, including the ability to build and manage effective working relationships.
- Demonstrated ability to act as a trusted advisor to enabling clients, constituents, and colleagues to engage in appropriately risk-informed decisions.

## About Our Team

Division 11000’s purpose is to enable Sandia to accomplish its mission and effectively manage legal, regulatory, and contractual risk. Our vision is to lead the Complex in the quality and value of the advice and solutions we provide. Our mission is to deliver clear, actionable, and high

Challenging work with amazing impact that contributes to security, peace, and freedom worldwide, Extraordinary co-workers, Some of the best tools, equipment, and research facilities in the world, Career advancement and enrichment opportunities, Flexible work arrangements for many positions include 9/80 (work 80 hours every two weeks, with every other Friday off) and 4/10 (work 4 ten-hour days each week) compressed workweeks, part-time work, and telecommuting (a mix of onsite work and working from home), Generous vacations, strong medical and other benefits, competitive 401k, learning opportunities, relocation assistance and amenities aimed at creating a solid work/life balance.

Legal, Regulatory, Contractual Risk, Patent Prosecution, Patentability, Copyright License Agreements, Technology Transfer Agreements, Patent Infringements, Conflict of Interests.

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Qualification and Experience Law degree from an ABA accredited law school and active bar membership.

Legal