Patent Attorney General Counsels Office

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• Generous Retirement Contributions:The State contributes 14.94% of your gross salary and you contribute 3.68% totaling 18.62% toward your retirement plan.
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At the University of Wyoming we are committed to creating a supportive and enriching workplace. To learn more about what we offer please refer to UWsBenefits Summary.

JOB TITLE:

Patent Attorney

JOB PURPOSE:

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 universitys long-term IP strategy.

ESSENTIAL DUTIES AND 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 BayhDole 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.

SUPPLEMENTAL FUNCTIONS:

• 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.

COMPETENCIES:

• Collaboration
• Judgement
• Visionary Leadership
• Technical/Professional Knowledge
• Innovation
• Analysis/Problem Identification
• Work Prioritization & Management

MINIMUM QUALIFICATIONS:

• 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.

DESIRED QUALIFICATIONS:

• 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 communicationskills.
• Research and analytical skills.
• Ability to work effectively and efficiently in a fast-paced and challenging environment.

Knowledge and abilities specific to the job:

• 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 universitys interests when working with outside counsel licensees and industry partners.

REQUIRED APPLICATION MATERIALS:

Complete the online application. The department additionally requests candidates upload the following document(s) for a complete application:

1. Cover letter
2. Resume or C.V.
3. Contact information for four work-related references (references will only be contacted if you are selected as a finalist for the position).

WORK LOCATION:

On-campus: This position provides vital support to campus customers and the successful candidate must be available to work on campus.

HIRING STATEMENT/EEO:

All qualified applicants will receive consideration for employment without regard to race color religion sex sexual orientation gender identity national origin disability or status as a protected compliancewith the ADA Amendments Act (ADAAA) if you have a disability and would like to request an accommodation to apply for a position please contact us at or emailjobapps@.

ABOUT LARAMIE:

The University of Wyoming is located in Laramie a charming town of 30000 residents nestled in the heart of the Rocky Mountain West. The state of Wyoming continues to invest in its only 4-year university helping to make it a leader in academics research and outreach with state-of-the-art facilities and strong community ties. We invite you to learn more about Laramie by visiting theAbout Laramie website.

Located in a high mountain valley near the Colorado border Laramie offers both outstanding recreational opportunities and close proximity to Colorados Front Range and the metropolitan Denver area. Laramies beautiful mountain landscape offers outdoor enjoyment in all seasons with over 300 days of sunshine annually. For more information about the region please visit Experience:

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