Patent Attorney - Office Of Technology Transfer And Industry Collaboration

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Patent Attorney - Office of Technology Transfer and Industry Collaboration

Duties: Responsible for pre-award and post-award (both fiscal and non-fiscal) administration of grants and contracts (through the Office of Research Administration and Sponsored Programs Accounting), protection, management, and licensing of the University's intellectual property (through the Office for Technology Transfer and Industry Collaboration), oversight of the use of human subjects and laboratory animals in research, implementation of the University's policies on conflict of interest in research and misconduct in research and scholarship, and for working with other administrative offices to create an environment at the University that encourages and facilitates research. Catalyzes the commercialization of technologies for global public benefit, with a particular emphasis on the creation of start-up companies based on technologies. Responsible for the management and commercialization of the intellectual property portfolios of University and Center and actively seeks invention disclosures from faculty members of both institutions and negotiates industry-sponsored research and material exchange agreements to support these efforts and offers a range of programs and services to the community to promote commercialization of technologies. Plays a pivotal role to support mission and to expand its impact. Will be responsible for designing and executing patent filing and prosecution strategy for matters assigned by the senior director. Work with licensing associates and university inventors on assigned matters. Handle all aspects of patent law with a particular emphasis on application drafting, worldwide patent filing and prosecution, and evaluating patent validity and infringement issues. Will act as a member of the team, collaborating with team members on patent and business strategies and interfacing with the General Counsel’s office to ensure compliance with policy. Patent Preparation: Prepare provisional, utility, and international patent applications; design filing and prosecution strategies for assigned matters. Patent application writing will be a significant part of the responsibility of this position. Patent Prosecution: Conduct domestic patent prosecution, including drafting amendments and reviewing and responding to office actions; convey instructions for prosecution to foreign and domestic outside patent counsel; review and revise drafts of submissions from outside patent counsel, and ensure proper coordination and execution of the overall patent prosecution strategy. Patent prosecution will be a significant responsibility of this position. Patentability and Freedom-to-Operate Analyses: Assist licensing associates with identification and assessment of patentable inventions and evaluation of proposed collaborations. Review invoices from law firms to determine accuracy and appropriateness of invoices related to assigned cases. Approve invoices for payment. Work with the team to ensure swift and accurate capture of data related to assigned matters. Participate in periodic meetings, across groups, where key legal, business, and other matters are addressed.

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