Patent Attorney - General Counsels Office

UW Candidate Experience•Laramie, WY

1d•Onsite

About The Position

Provide legal counsel on all matters related to Intellectual Property (IP) law, with a primary focus on patent protection and commercialization pathways. Partner with university stakeholders to evaluate research outputs, manage patent prosecution and support technology-transfer activities. Ensure institutional compliance with federal IP regulations, including the Bayh-Dole Act, and advance the university’s long-term IP strategy.

Requirements

EDUCATION: JD from ABA accredited law school
EXPERIENCE: At least 5 years of legal experience in drafting and prosecuting patent applications
LICENSURES, CERTIFICATIONS, REGISTRATIONS, OR OTHER REQUIREMENTS: Registered to practice before the U.S. Patent and Trademark Office.
Licensed to practice law in at least one U.S. jurisdiction, or ability to obtain licensure in the state within 12 months of hire.
Comprehensive knowledge of U.S. patent law, regulations, and USPTO procedures.
Excellent drafting skills for patent applications, office-action responses, and legal memoranda.
Strong knowledge of intellectual property management, technology transfer practices, and academic research environments.
Familiarity with licensing, contracts, sponsored research agreements, and other IP-related legal frameworks.
Knowledge of policies, compliance requirements, and risk considerations relevant to university research and commercialization.
Knowledge of Bayh-Dole Act requirements and federal reporting processes (iEdison).
Ability to interpret complex research agreements and align IP terms with institutional policies.
Strong legal research, analytical, and critical-thinking skills, with the ability to assess patentability, infringement, and validity issues.
Skilled in negotiation and contract review, particularly related to licensing and research agreements.
Effective project-management skills, including the ability to manage multiple cases, deadlines, and interactions with internal stakeholders and outside counsel.
Strong communication skills, including the ability to explain complex IP concepts to non-legal audiences such as faculty and researchers.
Ability to collaborate effectively with faculty, staff, administrators, and external partners.
Ability to strategically develop, manage, and advise on a patent portfolio aligned with institutional goals.
Ability to make sound legal judgments and provide practical, business-minded guidance.
Ability to work independently while exercising discretion and maintaining confidentiality.
Ability to represent the university’s interests when working with outside counsel, licensees, and industry partners.

Nice To Haves

Background in chemical engineering, chemistry, or related fields.
Patent application and drafting experience in the fields of energy, chemical engineering, chemistry, and related fields.
Experience in higher education
Excellent oral and written communication skills.
Research and analytical skills.
Ability to work effectively and efficiently in a fast-paced and challenging environment.

Responsibilities

Collaborate with the Technology Transfer Office, faculty, staff, and the Research and Economic Development Division to identify, evaluate, and protect university intellectual property.
Conduct patentability assessments; draft, file, and prosecute patent applications; and manage issued patents, including annuity payments and post-grant administration.
Advise on patent infringement, validity, and related IP risk matters.
Develop and implement policies and procedures governing IP protection and patent management within the university.
Provide IP guidance in the drafting, review, and negotiation of university contracts, license agreements, grants, and other research-related agreements.
Manage matters referred to outside counsel, ensuring alignment with university objectives and effective oversight of external legal services.
Coordinate with staff on the transfer of licensed patent applications and issued patents to outside counsel, and oversee prosecution handled externally to ensure university interests are maintained and protected.
Advise internal stakeholders on patent strategy, portfolio development, and ongoing portfolio management.
Ensure compliance with federal regulations applicable to university intellectual property, including Bayh–Dole Act obligations (e.g., invention disclosure, election of title, government reporting).
Advise on matters related to export controls, confidentiality, data ownership, MTAs, and other research-compliance issues when they intersect with IP.
Provide training and outreach to faculty, researchers, and administrative units on IP protection, patent basics, and invention disclosure processes.
Monitor changes in IP law, USPTO rules, and relevant federal regulations, and advise university leadership on their implications.
Serve on committees and perform other duties as assigned by the Vice Presidents.
Attend conferences and workshops applicable to current legal issues and trends within national and international intellectual property changes.
Draft and review University Regulations, policies, and procedures regarding intellectual property and related matters.
Research and advise University departments and high-level administrators on broad and complex areas of law related to intellectual property and contracts.
Assist with representing the University in in internal proceedings and external administrative proceedings involving intellectual property issues with state and federal agencies.
Provide proactive legal education and advice to University administrators, managers, and supervisors regarding changes in intellectual property laws.

Benefits

Generous Retirement Contributions: The State contributes 14.94% of your gross salary, and you contribute 3.68%, totaling 18.62% toward your retirement plan.
Exceptional Health & Prescription Coverage: Enjoy access to medical, dental, and vision insurance with competitive employer contributions, that include 4 deductible options to suit your needs.
Paid Time Off: Benefit from ample vacation, sick leave, paid holidays, and paid winter closure.
Tuition Waiver: Employees and eligible dependents can take advantage of tuition waivers, supporting continuous education and professional growth.
Wellness and Employee Assistance Programs: Stay healthy with wellness initiatives, counseling services, and mental health resources.

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