Patent Agent

Brookhaven National Laboratory•Upton, NY

1d•Hybrid

About The Position

Brookhaven National Laboratory’s (BNL’s) Intellectual Property Legal Group within the Office of General Counsel, is seeking a Patent Agent for a full-time, permanent position. The position of Patent Agent will be responsible for managing an active patent docket for BNL inventions related to diverse scientific disciplines, including for example, nanomaterials, microelectronics, bioengineering, high energy physics, and electrocatalysts. The Patent Agent will be registered to practice before the United States Patent and Trademark Office (USPTO.) They will be capable of handling patent matters, including for example, determining patentability of reported inventions and coordinating the patent preparation and prosecution of patent applications filed with the USPTO to obtain the broadest possible patent protection for the technology transfer of inventions arising out of research conducted at BNL.

Requirements

Bachelor’s degree or higher in a technical or scientific discipline (or equivalent foreign degree).
Current registration with the U.S. Patent and Trademark Office (USPTO) as a Patent Agent.
Minimum 6 years of experience in patent drafting and prosecution.
Experience managing multiple matters in a collaborative, research-driven environment.
Strong knowledge of patent laws, USPTO procedures, and technology transfer processes.
Ability to obtain and maintain federal security clearance.
Demonstrated knowledge of and familiarity with patent laws and regulations necessary for patent preparation, prosecution and maintenance before the USPTO.
Solid Communication skills both written and verbal with legal, scientific and technical professionals, especially regarding complex patent concepts, so that invention disclosure, patent application preparation and filing, and patent application prosecution processes can be understood by those involved.
Ability to apply independent judgement to develop tailored patent protection for diverse technologies.
Familiarity with tracking, recording and docketing USPTO and other due dates in Sophia (Evolve) or other IP management/technology transfer system (e.g., Inteum.)
Ability to manage competing priorities and statutory deadline.
High degree of attention to details and organizational skills to follow up on information and inputs needed to receive complete invention records, maintain accurate docketing, and conduct patent application preparation, filing and prosecution.
Ability to inspire teamwork, take initiative and learn new systems and processes.
Ability to maintain confidentiality and handle sensitive or privileged information appropriately.

Nice To Haves

Familiarity with Department of Energy rules, regulations and policies for management and operating (M&O) contractor prime contract terms, including for example, patent rights, data rights and technology transfer mission clauses.
Experience drafting and prosecuting patent applications involving software/computer science, or degree in computer science, software engineering or electrical engineering.
Technical degree or background involving algorithms, data structures, AI/ML/LLMs.
Ability to identify innovative ways to improve work processes and efficiency and electronic patent portfolio management and implement emerging AI IP tools.

Responsibilities

Processing incoming records of inventions and other disclosure forms (“disclosures”) of inventions or other intellectual property.
Developing and overseeing the implementation of intellectual property protection processes.
Preparing, filing, prosecuting patent applications, maintaining patents, as well as handling supporting documents and forms in coordination with outside counsel.as needed before the U.S. Patent and Trademark Office (USPTO) and in support of foreign counterparts.
Collaborating with others, applying sound judgment, taking initiative, and possessing a willingness to work with a team environment, to learn systems and processes.
Operating within legal, regulatory and contractual frameworks and ensuring compliance with DOE prime contract, regulations, orders or instructions for protecting laboratory inventions.
Other duties as assigned.