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Years of Experience
Date Last Verified
ProfileIp Counsel The candidate oversees all legal and administrative matters related to the Institute’s patent portfolio, and, in the case of candidates with law degrees the Institute’s contractual agreements. The role regularly interacts with researchers, government agencies and industry partners to effect efficient execution of agreements and transfer of intellectual property into and out of the Institute. The position works closely with other academic institutions on research collaborations, joint patent prosecution, and IP sharing agreements, and promotes awareness of intellectual property protection and technology transfer to faculty. For candidates with law degrees, the position will be the main point of contact for general advising on miscellaneous Institute legal matters, and will also lead many activities related to the Business Development department such as matters involving: licensing, research agreements, corporate sponsored research, and partnership transactions. Ensures the Institute’s compliance with government regulations related to IP issues, including invention reporting to iEdison and coordination with the Institute’s Sponsored Research Office of invention reporting for progress reports for awarded grants. Procures protection for research discoveries and proprietary rights of the Institute in accordance with the objectives of the Institute and the regulations of governmental agencies or other third parties (e.g., for-profit corporations) that provide research funding. Orients new faculty members to intellectual property and technology transfer policies and procedures. Provides advice and counsel to Institute investigators. Ensures appropriate transfer of outgoing and incoming faculty members' intellectual property, including patents, patent applications and research materials. Evaluates new technology disclosures submitted by investigators to determine patentability of technology. Organizes and chairs the Institute’s IP evaluation committee for assessment of technology disclosures. In response to investigator requests, reviews manuscripts and other materials produced by Institute’s investigators prior to their public disclosure. Oversees and runs the patenting process, including prosecution, filing, portfolio management and curation, selection and management of outside law firms and control of costs. Executes on the final decision from the IP evaluation committee for maintenance and abandonment of patents. Oversees the maintenance and integrity of the Institute’s intellectual property databases. Coordinates and maintains internal filing system of all agreements and other appropriate documentation related to intellectual property. Develops and achieves annual budgets, revenue forecasts, and department goals. Drafts, negotiates as applicable (in cooperation with the Business Development team), executes, and administers all agreements generated by the Institute (e.g., corporate sponsored research agreements, service agreements, consulting agreements, licensing agreements and research collaboration agreements). Reviews incoming IP-related agreements that have been drafted by third parties. Provides advice and counsel on miscellaneous legal issues, including subpoenas, contractual support relating to for-profit affiliations and partnerships, copyright infringement concerns, Freedom of Information Act requests, dispute resolution, and other general legal matters. In collaboration with the Sponsored Research Office and Finance Department, oversees annual completion and review of conflict of interest disclosures from the investigators and subsequent submission of final report to the President. Performs other legal duties as assigned. Acts as internal lead on Institute legal matters (e.g., subpoenas, dispute resolution).
Qualification and Experience
The candidate should have Bachelor’s degree and preferable a graduate degree in the chemical and/or life sciences and registration with the US Patent Office with 5+ years of experience in the biotechnology or pharmaceutical industry, or a biomedical research organization, academic technology transfer office or law firm, or an equivalent combination of education, training and/or experience from which comparable knowledge, skills and abilities have been attained. 5 years of experience as a patent agent or attorney and expertise in patent drafting, prosecution and administration is needed. Candidates with a law degree and relevant experience negotiating licenses and research partnership transactions, performing appropriate due diligence and successfully closing complex transactions are encouraged to apply. Must possess strong attention to detail, analytical, time management, organizational, communication, and interpersonal skills. Should have professional proficiency in Microsoft Office.
Tracking Code: 219357-891