Senior Intellectual Property Manager

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Senior Intellectual Property Manager
The candidate reviews pre-analysis checklists and uses the information provided along with the other disclosure documents to prepare new disclosure summaries including conducting preliminary prior art analysis, if necessary, to identify patentable and commercially valuable subject matter. Evaluates inventions for intellectual property potential and works closely with IP counsel to file for appropriate IP protection, i.e., patent applications, copyrights, trademarks, etc. Works closely with internal staff and groups to generate IP landscapes for invention disclosures to identify market opportunities. Interfaces with internal and external counsel to coordinate patent decisions within a fixed budget. Engages in outreach and education related to JHTV’s mission, intellectual property and technology transfer practices. Develops IP protection strategies for inventions retained by the university in consultation with licensing staff, inventors and IP counsel. Implements the strategies. Tracks and fulfills filing obligations for licensed technologies in portfolio. Directs patent counsel in the preparation, filing and prosecution of U.S. and international patent applications. Maintains a Computer Packages (CPI) docket for tracking filing obligations for their assigned portfolio. Provides oversight and management of the patent budget for assigned cases. Establishes and maintains contacts with industry IP managers, patent counsel and representatives at other academic institutions. Works with Safesforce and Inteum databases to review IP for encumbrances or other issues before marketing material is sent to potential licensees. An advanced degree in science, business or law is required. Registered Patent Agent required. Must have working knowledge of intellectual property management and patenting that is typically gained through a minimum of 4+ years of related intellectual property management experience. Prior university experience is desirable but corporate experience is highly preferred.

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