Licensing Support Manager

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Licensing Support Manager

Duties: Under the direction of the Associate Director, Licensing, supports the office's licensing activities by, among other things, managing all aspects of patent prosecution for 650+ invention portfolio, monitoring licensing agreements (including licensee compliance) and performing complex data analysis. Review incoming invention disclosures to identify federal, sponsor and other compliance obligations. Assure all federal, sponsor and other compliance obligations are identified and met throughout the life of the invention, including those related to the eventual licensing and commercial development of inventions. Assure iEdison database is maintained and errors, if any, are promptly corrected. Review patent applications drafted by outside attorneys to assure appropriate notices regarding federal licensing rights are included, as required by federal law, notifying outside attorneys when corrections are needed. Determine if confirmatory licenses to the federal government are required and if so, execute and report such licenses. Execute waivers of title to the federal government, when appropriate. Serve as primary liaison to outside law firms that are prosecuting patents on behalf on all aspects of patent prosecution. Provide instructions to outside counsel after consultation with assigned licensing officer and any licensees. Maintain processes for tracking progress of complex patent prosecutions. Obtain cost estimates, when appropriate or when requested by the licensing officer; monitor outside counsel's adherence to agreed-upon cost estimates. Identify/monitor upcoming legal deadlines for each invention under patent prosecution to assure timely decisions are made. Monitor legal services provided for accuracy, timeliness, adherence to cost estimates and expectations, and completeness. Review invoices for legal services and address billing errors with the outside attorney, independently or after consultation with the licensing officer and any licensee, as appropriate. Monitor upcoming annuity and maintenance fee deadlines and determine whether such fees should be paid, consulting licensing officer when appropriate, and giving appropriate instructions to outside counsel. Execute legal patent prosecution documents on behalf of The Regents of the University of California, including any necessary powers of attorney, declarations and assignments. Assure PTS database is accurately and timely maintained to assure the legal status and prosecution stage of each active invention is correct. Gather, filter and synthesize large quantities of information concerning patent prosecution activities, designing customized reports through PTS, when needed, to assist Director and Associate Director review the operations, status and economics of 650+ technology portfolio from a variety of perspectives. Prepare reports and/or analysis summarizing complex information for Director and Associate Director, and compile data, statistics and other information for meetings and presentations, concerning patent prosecution activity. Monitor overall annual patent prosecution budget ($3.0M+) to determine whether ongoing expenditures within 650+ invention portfolio is consistent with annual budget set by the Director, working with the senior licensing staff to understand the financial dynamics of various portions of the overall portfolio. Apply professional experience to perform moderate to complex analysis to understand past patent prosecution expenditures and determine present and future performance, advising Director and Associate Director when expenditures are projected to be higher than the set annual budget. Monitor and analyze changes in external regulations, legislation and policies for impact on patent prosecution, updating and modifying attorney instruction and internal business processes. Review executed letter of intent, option agreement and license agreements to identify key contract terms. Once key terms identified, assure agreement terms are accurately tracked within all relevant internal systems. Advise accounting group on financial terms to assure all financial obligations and due diligence milestones are set up for invoicing, including complex patent reimbursements that may involve multiple licenses. Prepare/send invoices for initial licensing fees, as well as other post-execution legal documents. Monitor licensee compliance with all licensing obligations and assure licensee meets all licensing obligations. Notify licensing officer when a licensee is not meeting licensing obligations, intervening and initiating action to address noncompliance issues either or in coordination with the licensing officer, as requested. Upon the request of the Director or Associate Director, prepare complex, customized reports and conduct complex analysis for the Office of Technology and Industry Alliances, research centers/departments and/or faculty on technology portfolio or specific portions of the technology portfolio on a variety of issues for use in business operations review, meetings, presentations, research funding proposals and extramural funding close out reports. Design customized searches of complex databases, working with UCOP experts and staff at all levels, when necessary, to pull and synthesize data.

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