US Department of Energy (DOE) Seeks Patent Attorney

The Department of Energy (DOE) is looking for a Patent Attorney to join its law practice and be responsible for the protection and administration of Intellectual Property (IP) matters on behalf of DOE and perform a broad range of duties, including preparing and prosecuting patent and trademark applications, providing legal advice in areas of technical data, trade secrets, licenses, copyrights and trademarks, and investigating claims of infringement brought against DOE and DOE laboratories.

Position Overview

  • Open & closing date – 04/07/2020 to 04/21/2020
  • Service – Excepted
  • Pay scale & grade – GS 12 – 15
  • Salary – $86,335 to $170,800 per year
  • Appointment type – Permanent
  • Work schedule – Full-Time
  • Location – Washington DC

Responsibilities

The incumbent serves as a Patent attorney reporting to the Assistant General Counsel for Technology Transfer and Intellectual Property, who has the responsibility for protecting the government’s interest in intellectual property, both domestically and world-wide; formulating DOE IP policy Department-wide; providing direction of all field patent counsels; commenting on legislation involving IP and technology transfer matters analyzing claims of infringement involving privately owned intellectual property; representing DOE before the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board, assisting the Department of Justice in all DOE IP-related matters before the U.S. Court of Federal Claims and the U.S. Court of Appeals for the Federal Circuit; processing patent waiver petitions; participating in contract reviews and negotiations; and performing other duties of a legal nature as required by the General Counsel.

Responsibilities pertain to a broad range of valuable intellectual property rights such as patents, technical data, trade secrets, licenses, copyrights and trademarks, which arise through DOE activities.  These involve, among other things, the protection of government and taxpayer interests in DOE funded intellectual property by taking appropriate actions to enforce statutory, regulatory and contractual obligations; secure intellectual property rights for government use; promote the commercialization and public availability of inventions made in the United States by United States industry; help maximize the impact of federally funded intellectual property and technology transfer; and secure patent protection of inventions made by employees DOE and its contractors.

Conditions of Employment

  • You must be a U.S. Citizen.
  • This employer participates in the e-Verify program.
  • Relocation expenses will not be provided.
  • See “Other Information” section regarding Selective Service requirements.
  • Background and/or Security Investigation is required.
  • THIS POSITION IS NOT IN THE BARGAINING UNIT COVERED UNDER NTEU.

Requirements

BASIC REQUIREMENTS:

All candidates must meet the minimum education requirements of successful completion of a full course of study in a school of law accredited by the American Bar Association (ABA) with a professional law degree (J.D. or LLM) and must be a current, active member in good standing of the bar of a state, territory of the United States, District of Columbia, or Commonwealth of Puerto Rico.

CONDITIONS OF EMPLOYMENT FOR THIS VACANCY:

A preliminary background investigation must be completed before a new employee can begin work. Current federal employees or other individuals with an existing completed background investigation may not be required to undergo another background investigation. If selected for this vacancy, you will be required to file the OGE Form 450 (Confidential Financial Disclosure Statement).

If selected, you must self-identify if you are or were (within the last 5 years) a Schedule A, Schedule C, or non-career SES political appointee as OPM approval is required prior to finalizing your selection.

Qualifications

GS-12: Have a professional law degree (J.D. or LL.M) and active membership in a state or District of Columbia bar and one year of professional (attorney) legal experience and advanced educational attainments that clearly indicate the ability to independently perform complex legal work.  The educational background should include course work beyond the first professional degree in a field directly related to the work for which he/she is being considered.

GS-13: Have a professional law degree (J.D. or LL.M) and active membership in a state or District of Columbia bar and one year of professional (attorney) legal experience and advanced educational attainments that clearly indicate the ability to independently perform complex legal work and one additional year of professional (attorney) experience at a level of difficulty and responsibility equivalent to that of an attorney at the grade immediately below the one being filled.

GS-14: Have a professional law degree (J.D. or LL.M) and active membership in a state or District of Columbia bar and three years of professional (attorney) legal experience and advanced educational attainments that clearly indicate the ability to independently perform complex legal work, plus one additional year of professional (attorney) experience at a level of difficulty and responsibility equivalent to that of an attorney at the grade immediately below the one being filled.

GS-15: Have a professional law degree (J.D. or LL.M) and active membership in a state or District of Columbia bar and four years of professional (attorney) legal experience and advanced educational attainments that clearly indicate the ability to independently perform complex legal work, plus one additional year of professional (attorney) experience at a level of difficulty and responsibility equivalent to that of an attorney at the grade immediately below the one being filled.

SPECIALIZED EXPERIENCE:

  • Knowledge of Intellectual Property law and practice, including patents, technical data, copyrights, trade secrets, licenses and trademarks.
  • Broad, in-depth knowledge of patent prosecution matters before the USPTO, including reviewing invention disclosures, preparing and prosecuting patent applications, interviewing Examiners in the USPTO to argue the patentability of inventions claimed and to determine the scope of claims that will satisfy the examiner and yet meet DOE requirements.
  • Ability to independently conduct prior art searches in the USPTO on disclosures submitted by Field Patent Counsel and contractors in various technologies.
  • Ability to conduct searches in the USPTO for the purpose of determining whether trade marks proposed for use by DOE infringe upon any existing registered trademarks.
  • Knowledge of domestic and international intellectual property issues, including filing requirements for foreign patent applications.
  • Knowledge of technology transfer laws relevant to DOE-funded technologies.
  • Ability to draft license agreements for patents and trademarks.
  • Ability to conduct infringement and validity analysis of patents.
  • Knowledge regarding the copyright laws, media law, open source software licensing, and information technology law.
  • Knowledge of and experience in patent, trademark and copyright litigation in federal courts and proceedings before the United States Patent and Trademark Office.
  • Ability to communicate legal advice and guidance effectively and persuasively, and the ability to make informative and engaging presentations on relevant issues.
  • Demonstrated skill and ability in the sciences including the ability to quickly understand new, complex technologies.
  • Demonstrated skill of clear and effective scientific, legal, technical, and general communication, including public speaking and writing, with the ability to effectively communicate complex issues with multiple stakeholders with varying backgrounds.
  • Demonstrated skill and ability to develop creative solutions to complex legal and technical problems.
  • Demonstrated ability to work well in a team environment including establishing effective working relationships among team members and taking the initiative to help solve problems.
  • Demonstrated ability to independently manage a large, diverse and complex workload with multiple deadlines and changing priorities.
  • Demonstrated skill and ability to effectively negotiate bilateral or multilateral contracts, arrangements or conflicts on complex and technical issues between diverse parties.

Education:

  • You must meet all qualification and eligibility requirements by the closing date of the announcement.
  • Specific experience is defined as professional legal experience, which enabled the candidate to acquire the knowledge, skills and abilities necessary to perform the work relevant to a specific legal component.
  • You must be registered to practice before the United States Patent and Trademark Office.
  • Candidates must have completed a full four-year course of study in an accredited college or university leading to a Bachelor’s degree in a scientific, technological, or engineering field.

Additional information:

This is an excepted service position where appointees must serve a one-year trial period.  Male applicants born after 12/31/1959, who are required to register with the Selective Service under section 3 of the Military Selective Service Act, must be registered (or must have registered at the time they were required to do so) in order to be eligible for appointment.  For more information, visit the SELECTIVE SERVICE SYSTEM web site.

Relocation expenses will not be provided.

Interested Candidates:

Interested Candidates MUST APPLY VIA EMAIL to Brian Lally.  To learn more about this position, including how you will be evaluated and required documentation, please visit the

The Author

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