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Patent Attorney

Malibu, CA, USA Req #58
Monday, July 15, 2019
EDUCATION DESIRED: B.S. in Electrical Engineering, Physics, or related discipline, plus a JD Degree.
 

ESSENTIAL JOB FUNCTIONS: Responsible for HRL’s Intellectual Property portfolio including advising management on IP issues, identifying patentable inventions, patent prosecution, management of outside counsel. Responsibilities shall also include: Assisting inventors prepare invention disclosures, conduct prior art searches; providing guidance and support to HRL technical personnel in the assessment of technology for patentability; supporting the administration and management of the HRL Legal Information system, ensuring required United States Patent and Trademark Office (USPTO) deadlines are met; supporting the management of outside counsel for patent matters. Acting as liaison with customers, government agencies, outside counsel and LLC members for all IP matters. Handling associated assignments in support of the HRL General Counsel. Support Contracts by reviewing and interpreting contract terms and conditions for commercial and government contracts. Support business development efforts through the preparation of data rights assertions for proposals.
 

EXPERIENCE DESIRED: Practical experience (7+ years) as an engineer or in-house counsel required. Status as a Patent Attorney in good standing required. Work experience (1) drafting, preparing, or prosecuting patents; and/or (2) analyzing technology for export control classification is desired. Experience with the USPTO Electronic Filing System is highly desirable. The successful candidate will be able to demonstrate an ability to engage with the technical staff to further hone and manage HRL’s IP portfolio including identifying the kernel of the invention, identify and resolve potential patentability issues, assist the technical staff with office actions, review and improve draft patent applications prepared by outside counsel. The successful candidate will be able to engage with the technical staff on a technical level as well as on a legal level. The successful candidate will also support HRL’s business development plans with timely production of patent applications, Ex Parte Re-exam applications, freedom to operate analyses, and IP roadmaps to guide future research efforts.
 

KNOWLEDGE DESIRED: Ability to quickly learn U.S. government regulations, directives and practices regarding contracts, export and import operations. In-depth knowledge of ITAR, EAR and customs regulations is desired but not a requirement.
 

ESSENTIAL PHYSICAL/MENTAL REQUIREMENTS: Excellent written and verbal communications skills required to communicate effectively with HRL’s organization, external agencies and LLC members; analytical skills; work in a fast-paced environment. Work with VDT/monitors. Be sufficiently mobile to travel throughout site. Through experience, knowledge, skill and performance become the “go to” person for all IP issues at HRL.
 

SPECIAL REQUIREMENTS (e.g. driver’s license, special tools or restrictions): U.S. Citizenship required. Active DoD security clearance or the ability to obtain and maintain a security clearance is required.

This position must meet Export Control compliance requirements, therefore a "U.S. Person" as defined by 22 C.F.R. § 120.15 is required. "U.S. Person" includes U.S. Citizen, lawful permanent resident, refugee, or asylee.
 
We are proud to be an EEO/AA employer M/F/D/V. We maintain a drug-free workplace and perform pre-employment substance abuse testing.

Other details

  • Pay Type Salary
  • Malibu, CA, USA