Reporting to a Portfolio Director or an Associate Director, the Senior Intellectual Property (IP) Manager independently manages a docket of technologies and has advanced skills in strategic IP assessment and patenting strategies. Through interactions with faculty members, staff, students, and outside counsel, the Senior IP Manager develops IP strategy, manages patent prosecution and develops intellectual property assets for commercialization.
Specific Duties & Responsibilities:
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.
Minimum Qualifications (Mandatory):
An advanced degree in science, business or law is required.
Registered Patent Agent required.
The strongest candidate will have a 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.
Special Knowledge, Skills, and Abilities:
Previous experience with intellectual property management and development of IP strategy
Good organizational skills including ability to multi‐task and prioritize
High level of accuracy and attention to detail
Demonstrated skills in oral and written communication
Ability to converse on scientific and technical matters in a variety of disciplines with investigators, outside counsel and non‐scientific staff
Ability to effectively communicate with all levels of the organization and to work in a collaborative team environment
Ability to maintain confidentiality
The successful candidate(s) for this position will be subject to a pre-employment background check.
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