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Legal Staff Paralegal in Evanston, IL

Northwestern University Nov 24,2017 Nov 23,2017 Location Evanston IL
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Academic

Legal Staff

Intellectual Property - Patent General

Min 5 yrs required

Profile

Manager of INVO Docketing and Compliance The candidate, under the direction of the Senior Director of Finance and Administration, is a player manager in the Innovation and New Ventures Office actively responsible for both managing compliance and docketing while also participating in the execution of the function. Leads the compliance and docketing team in the execution of all administrative, procedural, and inventor issues related to an intellectual property portfolio in support of INVO. Participates in patent prosecution and license agreement activity within the portfolio to support commercialization efforts. Responsible for managing the monitoring and satisfaction of government compliance for intellectual property within the university's patent portfolio. Manages performance of and provides direction to a junior member of the compliance and docketing team. Leads compliance and docketing team in the review and processing of patent activities and license agreements through: Review of standard legal documents and all patent correspondence, Correspondence/Meeting with faculty and inventors to provide outreach and guidance, Monitor of status of agreements, Maintenance of all files, Correspondence with stakeholders to monitor compliance with agreements, correspondence with external University legal counsel, and Maintenance patent and license dockets. Manages the requests for as well as development and execution of Confidential Disclosure Agreements (CDA) and Inter-Institutional Agreements (IIA). Leads the receipt of invention disclosures, proseution of patents, and guarantees compliance with Northwestern University requirements; documents appropriate information in INVO's database (Wellspring); documents disclosures elections and releases. Identifies, reviews, and monitors all government and private sponsor compliance requirements and time lines. Produces reports as required. Partners with other INVO midddle management and leadership to develop standard processes and structures for managing support of patent prosecution, licensing, and compliance reporting activities. Assists Invention Managers and Associate with creating licensing timelines, action plans, and deadlines. Manages performance and trains junior member of compliance and docketing team. Trains other members of the INVO team on aspects of government and private sponsor compliance requirements as well as docketing requirements.

Qualification and Experience

The candidate should have B.S. degree or equivalent experience with related IP experience. J.D or advance degree is preferred. Paralegal experience is desired. Experience leading other team members in a supervisory capacity is required. Experience with information and knowledge of relational databases is an asset. An advanced knowledge of patent prosecution, has the ability to work on patent portfolios with minimal supervision and guidance, is needed.

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