Licensing Associate III

Summary

This position provides lead support in the management of all aspects of the patent process, as well as compliance and agreements. The position provides expert, independent, and ongoing liaison with inventors, patent attorneys, companies and institutions.

Examples of Work

Job functions are specific duties that would be included in the essential functions of the job description. These functions are not all-inclusive nor do they cover the full extent of the duties performed.

• Conducts initial and ongoing communications with inventors of new technologies governing intellectual property rights.
• Investigate and monitor cases for impending statutory bars and deadlines.
• Maintain accurate files on U.S. and foreign patent applications.
• Prepare quarterly reporting of patenting and licensing activities.
• Compile annual data for patent portfolio review, budget management and projection, comparing detailed analysis of previous data to estimate expenses for the next fiscal year.
• Draft communications related to patent prosecution.
• Reviews all patenting correspondence received from patent attorney for accuracy and enters relevant data into OTL database, making sure the University’s patent right are protected at all times.
• Review, monitor and process for payment legal costs associated with patenting relating to the case management.
• Develop, revise and implement Standard Operating Procedures as patent law changes and the university technology licensing environment evolves
• Responsible for communicating with the funding agency and/or industrial sponsor, of the receipt of new intellectual property and ensuring all aspects government compliance.
• Work closely with Administration and Marketing team to commercialize technologies.
• Draft and evaluate Material Transfer Agreements, Confidential Disclosure Agreements, and Interinstitutional Agreements.
• Coordinate material transfer and confidentiality agreements for the research community to ensure protection of the University’s intellectual property rights.
• Responsible for review of files with high patent cost to determine if it is in the best interest of the University to continue prosecution through extraordinary measures, and provide final authorization to counsel for any possible actions.
• Expert user of Office of Technology Licensing’s database making sure all contractual data is accurate for contracts managed by the licensing team.
• Assign, delegate, and review work prepared.
• Compilation of reports for budget and marketing analysis
• Assess existing office processes and develop, revise, and implement Standard Operating Procedures to improve overall office quality and efficiency.
• Participate in training Licensing Associates I and II

Education and Experience

A bachelor’s degree in an appropriate area of specialization and three years of appropriate experience, or an equivalent combination of education and experience.

Licensure and Certification

N/A

Supervision

This position may include supervisory responsibility.

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