Sr. Counsel - Intellectual Property
Battelle · Arlington, VA · 2 mo ago
HybridLegalFull-time
Job Summary
We are seeking an Intellectual Property (IP) Attorney with 8 years of experience to support high-priority IP licensing and technology agreements, including administration of existing license obligations and related data cleanup/validation. The role also supports IP diligence for strategic transactions, disputes/enforcement coordination, cross-functional IP risk counseling, government IP rights (FAR/DFARS, subject inventions, data rights), and patent prosecution activities in partnership with outside counsel.
Responsibilities
- Draft, review, and negotiate IP-related agreements (licensing, MSAs/standalone agreements, NDAs, strategic partnerships, and related commercial terms), with emphasis on client-funded/sponsored work.
- Support review and administration of existing IP license agreements (key terms, reporting obligations, and compliance); assist in tracking down supporting documentation (e.g., certificates of insurance, royalty reports/payments, notices) from internal stakeholders and external counterparties; and validate/update records and perform agreement audits.
- Partner with leadership and cross-functional teams (product, engineering, R&D, marketing, contracts, and business teams) to provide practical guidance on IP risk, licensing positions, and commercialization opportunities; support IP diligence for strategic transactions and conduct scope clearances.
- Advise on and support compliance with government IP rights and contracting clauses (subject inventions, data rights, and applicable FAR/DFARS requirements).
- Support patent prosecution and portfolio management, including reviewing invention disclosures and partnering with the business to assess patentability, strategic value, and filing priorities; gather technical and business information from inventors and stakeholders to support drafting and prosecution; coordinate with outside counsel on drafting, filing, and prosecution strategies; and conduct prior art searches.
- Support development of the company’s IP strategy and help create and maintain IP and AI policies and practical playbooks (particularly for the contracts team); provide IP guidance and training to cross-functional teams.
- Support emerging-technology initiatives; support IP enforcement and dispute resolution.
Key Qualifications
- J.D. from an accredited law school and admission to a U.S. state bar (active and in good standing); U.S. Patent Bar registration (or eligibility) and an undergraduate technical degree (science/engineering) are preferred.
- 8 years of intellectual property-focused legal experience, with significant experience in IP licensing and technology agreements.
- Strong negotiation, drafting, and analytical skills; ability to deliver strategic, practical, business-oriented advice and influence senior stakeholders.
- Patent prosecution experience, including partnering with inventors and internal stakeholders to gather technical and business information for filings; managing outside counsel; supporting drafting/review of applications; and driving prosecution decisions and workflows (e.g., searches, office action responses, examiner interviews, and maintenance coordination).
- Experience with (or strong willingness to learn) government IP rights and clauses, including subject inventions and data rights; familiarity with FAR/DFARS is strongly preferred.
- Excellent organizational skills and follow-through; ability to manage multiple matters in a fast-paced environment and work effectively across cross-functional teams.
- Comfort with IP operations and systems; experience with (or willingness to learn) tools such as Legal Tracker, MDC, CPA Global, Anaqua, or similar platforms.
Preferred Qualifications
- Combination of law firm and in-house experience preferred; Ohio or Maryland bar admission is a plus.
- Experience supporting IP diligence in M&A transactions and/or government contracting IP issues (subject inventions/data rights; FAR/DFARS).
- Interest in artificial intelligence and supporting AI governance-related work.
Benefits
- Battelle offers comprehensive and competitive benefits to help you live your best life.
- Battelle provides employment and opportunities for advancement, compensation, training, and growth according to individual merit, without regard to race, color, religion, sex (including pregnancy), national origin, sexual orientation, gender identity or expression, marital status, age, genetic information, disability, veteran-status veteran or military status, or any other characteristic protected under applicable Federal, state, or local law.
- Battelle is an equal opportunity employer. We provide employment and opportunities for advancement, compensation, training, and growth according to individual merit, without regard to race, color, religion, sex (including pregnancy), national origin, sexual orientation, gender identity or expression, marital status, age, genetic information, disability, veteran-status veteran or military status, or any other characteristic protected under applicable Federal, state, or local law.