Battelle Memorial Institute Senior Counsel, Intellectual Property and Technology Transactions in Columbus, Ohio

Battelle is guided by a founding mission. We invest our knowledge, talents and resources, helping our customers achieve their most important goals. We apply scientific rigor and creativity, succeeding where others may fail, and we invest in our communities, making the world better for generations to come. All of us share a common purpose: to solve the greatest challenges of today and tomorrow.

Our 22,000 employees work at the forefront of scientific innovation to tackle critical challenges in security, human health, manufacturing, energy and environmental management. Battelle’s work is grounded in the belief that science, technology and a passion for excellence can make industries more competitive and the world a better place.

Primary Function

We are currently seeking a Senior Counsel, Intellectual Property and Technology Transactions. This position is located in Columbus, Ohio .

The Senior Counsel provides global intellectual property (“IP”) services to Battelle’s Contract Research Organization, including domestic and international IP procurement, enforcement, and clearance, business counseling, and transactional support. Assists in assuring that all operations of Battelle are conducted in accordance with law, protecting Battelle's assets and interests, and implementing management directives in accordance with law and Battelle policy. Functions with a high degree of professional knowledge with review of results by Department Manager.

Major Responsibilities

To be successful in your role as Senior Counsel, we need you to deliver on these responsibilities:

  • Deliver highly skilled patent procurement services. Draft and file patent applications (domestic, foreign and PCT applications), liaising with inventors, internal IP lawyers, agents, staff, and foreign counsel to obtain the information needed to prepare and successfully prosecute patent applications.

  • Support global IP strategy that targets growth in key market segments and accelerates new product innovations in each key market around the world.

  • Provide a full spectrum of intellectual property legal services including: client counseling; technology development and licensing contracts; trade secret protection, and patent and trademark protection, surveillance, enforcement, licensing, and litigation.

  • Conduct patent novelty, validity and right to market studies, patent and information searches, and analyzing and summarizing search results.

  • Provide strategic guidance as a business partner to R&D, Marketing, and Procurement by integrating legal advice with critical business strategies for product development, joint development efforts, and licensing matters.

  • Provide IP related advice for M&A assessments and negotiations, joint ventures, and start-up investments.

  • Strong collaboration skills to engage and partner with colleagues in the global law department and global client teams.

  • Travel is required in this position, approximately 20% and includes international travel.

Position Requirements

  • 7-10 years of patent law experience, including IP-related transactions, patent drafting and prosecution, freedom to operate opinions, and litigation.

  • A juris doctorate degree with excellent credentials, registration with the USPTO or EPO, and a member of the Bar in good standing is also required, with the ability to secure a license to practice in Ohio courts.

  • Experienced with various types of transactions (M&A, JV, licensing, JDA, partnering agreements, negotiation experience with universities and National Laboratories).

  • Proven ability to deal effectively with complex legal issues that have both legal and business ramifications.

  • Strong communication and interpersonal skills, with demonstrated experience of collaboration and successfully engaging with global teams.

  • Demonstrated ability to lead and build relationships at a distance.

  • Demonstrated excellence in client counseling.

THE FOLLOWING IS DESIRED, BUT NOT REQUIRED TO BE CONSIDERED FOR THIS POSITION:

  • Bachelor's Degree in preferably in Chemistry, Chemical Engineering, or Materials Science or Engineering

  • Demonstrated strength at collaboration in matrix organizations, especially in a global organization and across functions.

  • Superior understanding of, and ability to take and manage, risk.

  • Strong business acumen, and ability to connect the law and legal strategies to business goals in way that guides clients to successful outcomes.

  • Demonstrated ability to lead.

  • A strong working knowledge of and experience with PCT, European patent practice, and China patent practice is highly desirable.

  • Familiarity with technologies relating to Battelle's products and markets is strongly preferred.

  • Experience with intellectual property and technology issues arising in federal government contracts.

  • Experience with other IP such as trademarks and copyrights is useful.

  • Experience with polymer chemistry is highly preferred.

Legal Disclaimer

The above statements are intended to describe the nature and level of work being performed by people assigned to this job. They are not intended to be an exhaustive list of all responsibilities, activities and skills required of staff members. No statement herein is intended to imply any authorities to commit Battelle unless special written permission is granted by Battelle's Legal Department.

BENEFITS

Battelle’s competitive benefits program includes comprehensive medical and dental care, matching 401K, paid time off, flexible spending accounts, disability coverage, and other benefits that help provide financial protection for you and your family.

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, marital status, age, genetic information, disability, veteran-status, or any other characteristic protected under applicable Federal, state, or local law. Our goal is for each staff member to have the opportunity to grow to the limits of their abilities and to achieve personal and organizational objectives. We will support positive programs for equal treatment of all staff and full utilization of all qualified employees at all levels within Battelle.

For more information about our other openings, please visit www.battelle.org/careers