Licensing and Intellectual Property Counsel

Nanoramic Laboratories is an innovative, high-tech start-up company with an amazing company culture. We trust our employees and wholeheartedly believe in the value of transparency at all levels of the company. We empower our employees to make decisions that are in the best interest of the company.

By giving our employees the power to introduce new concepts, we allow those concepts to be willingly adopted from the ground up, instead of forced from the top down. At Nanoramic, continuous learning and education will be an important part of your job. We invest in regular company-wide education days and support each employee's growth and development. We are a company of smart, talented individuals who work hard, but also understand and respect work/life balance.

Overview:

Nanoramic Laboratories seeks an experienced patent attorney to serve as Intellectual Property (IP) Counsel, reporting to Nanoramic’s Chief Licensing Officer and Senior Vice President of Technology Licensing.

Approximately one half of the IP Counsel’s time will be devoted to developing strategic intellectual property assets with a focus on chemical, nanotechnology, and material science technology areas, and providing legal advice to Nanoramic’s business and technology groups.

The balance of IP Counsel’s time will be spent working with Nanoramic’s Major Technology Deal team supporting strategic IP exploitation activities including technology licensing, joint development activities, strategic partnerships, IP heavy M&A transactions, and the like. Nanoramic is open to providing training in these areas to candidates coming from more traditional patent preparation and prosecution backgrounds provided that the candidate exhibits strong judgment, good business sense and a willingness to jump into the deep end on complex high stakes deals.

This job requires strong analytical and technical abilities and demands fast, but carefully thought-out results. Strong leadership and control of the work process from beginning to end is necessary. The job centers around developing new ideas, systems, and also analyzing and improving on old ones. A high level of expertise is expected and the ability to spot and correct errors is important. Work must be done right and quickly, while always focusing on accomplishing the goal and demanding the highest quality work from co-workers. Interest and energy focuses primarily on the work at hand. The broad scope of the job demands a factual, direct and authoritative style of communication. Decision-making, though swift, is very calculated and singular, with little reliance on consensus or collaborating opinions.

Role Responsibilities:

Responsibilities may include the following and other duties may be assigned.

• Provide legal advice and service to Nanoramic’s business and technology groups on patents, copyrights, trademarks, trade secrets, and trade names including patentability of inventions, discovery, and avoiding infringement of patents.
• Coordinate closely with the Nanoramic General Counsel and CLO to align IP priorities.
• Coordinating with Nanoramic technology groups to harvest invention disclosures and prepare patent application drafts.
• Coordinating with outside counsel to file and prosecute patent applications to obtain the broadest possible protection for the company's inventions.
• Coordinating with Nanoramic technology and manufacturing groups to ensure all commercially important inventions are protected by valid patents and that products do not infringe valid third-party patents.
• Ensure all commercially important trademarks (including words, names, symbols and logos) are protected by, e.g., valid trademark registrations.
• Coordinating with outside counsel to handle appeal and interference proceedings.
• Render opinions regarding infringement and validity of patents.
• Provide advice to protect company's interest in scientific/technical publications and with collaborators, communities and suppliers.
• Coordinate with Nanoramic’s CLO and outside counsel to negotiate and draft patent licenses, joint development agreement, materials transfer agreements, and other agreements.
• Conducting and evaluate state-of-the-art patentability and infringement searches.
• Assist General Counsel in planning, tracking and managing the IP budget.

Qualifications:

• JD: Must have passed and retained attorney registration in at least one state (preferably Massachusetts or Colorado) and be in good standing.
• Technical Degree: Chemistry or Materials Science, undergraduate degree minimum, masters or higher strongly preferred. Experience with nanotechnology and/or energy storage (lithium ion batteries, supercapacitors, etc.) strongly preferred.
• USPTO Patent Bar Registration: Must have passed and retained USPTO patent bar registration in good standing.
• Legal Experience: 3+ years of law firm or in-house experience performing and/or managing broad IP responsibilities. 5+ years strongly preferred.

Excellent candidates will also have some or all of the following:

• In-depth knowledge and experience of:
  • patent preparation and prosecution;
  • patent licensing support or management
  • right-to-use/freedom-to-operate searching, analysis and clearance; and
  • IP due diligence activities
• Comfort with fast paced, highly self-directed start up culture
• Strong business sense, with a focus on monetizing IP
• Experience managing work with colleagues who are not geographically co-located
• Ability to work with and influence all levels of management and employees within the organization
• Excellent strategic planning skills
• Exceptional presentation, oral and written communication skills
• Ability to work with complex and sensitive information
• Demonstrated ability to think creatively about how to do more with less
• Experience counseling executives on complex legal issues
• Clear thinking, sound judgment. At Nanoramic, our team members are given the freedom to exercise independent judgement, but in return the company demands that all actions are backed up by disciplined thinking

Compensation:

We offer a competitive compensation package with up to 30% potential bonus (based on meeting divisional and company KPIs) which is paid out quarterly. We offer health, dental, vision, FSA, life insurance, 401k, and three weeks of paid time off plus one week for year-end vacation.

Nanoramic is proud to be an Equal Employment Opportunity employer. We do not discriminate based upon race, religion, color, national origin, gender (including pregnancy, childbirth, or related medical conditions), sexual orientation, gender identity, gender expression, age, status as a protected veteran, status as an individual with a disability, or other applicable legally protected characteristics.