Senior Intellectual Property Manager, Physical Sciences & Engineering (Univ. Staff Professional 1)
The University of Connecticut (UConn) is committed to advancing technology-based innovation and commercialization. As a part of the expansion of the roles and responsibilities of the Technology Commercialization Services (TCS) with an aim to support faculty and manage the protection and commercialization of intellectual property (IP) generated at UConn, the Office of the Vice President of Research is seeking a qualified, energetic patent agent or patent attorney for the position of Senior IP Manager, Physical Sciences and Engineering, to join the TCS team.
The position will report to the Associate Vice President of Innovation & Entrepreneurship. The ideal candidate for this position will be a self-starter who is able to work very closely with members of both the licensing and venture development teams within TCS. Incumbents will be responsible for managing all aspects of the IP portfolio in the areas of specialization. The position will function as a professional staff member within the Office of the Vice President and does not serve as a legal representative for the University.
DUTIES AND RESPONSIBILITIES
- Participate with the Licensing team in evaluating invention disclosures with responsibility for prior art searches and patentability, and making appropriate and informed decisions about patent application filing, prosecution, and response to office actions.
- Work with inventors at UConn to draft and file provisional patent applications.
- Prepare initial drafts of non-provisional and PCT patent applications for external patent counsel and review the final draft of patent applications before filing.
- Filing of non-provisional patents in areas of domain expertise as appropriate.
- In close collaboration with the Licensing Directors, participate in patent prosecution for University inventions by reviewing office actions and preparing draft responses to office actions for external patent counsel.
- Support maintenance of IP records and dockets; monitor patent expenses, scrutinize invoices with outside law firms, manage patent reimbursements from licensees, as well as collect and report IP metrics.
- Act as a liaison between external patent counsel and faculty, as needed, including participation in communications and meetings between the two.
- Participate in team-based review meetings for decisions on patenting and commercialization of inventions and present inventions for review.
- Participate in discussions, advice, and support decisions pertaining to the formation of University start-up companies with regard to IP protection and review of the patent landscape.
- Support negotiation of sponsored research agreements on intellectual property issues as needed.
- Lead quarterly review of University patent portfolio and recommend action items as necessary.
- Supervise interns who may be designated to work with the patent team.
- Work with other members of the OVPR to achieve the Office’s overall goals.
- Perform other related duties as required.
- J.D. with admission to the United States Patent and Trademark Office Bar with experience filing patent applications and responding to office actions.
- Bachelor’s degree within the appropriate area of discipline, with broad scientific knowledge to facilitate working with inventors across multiple disciplines.
- Minimum of three years of experience preparing and prosecuting patent applications, requiring strong technical writing skills.
- Ability to analyze scientific papers and/or patent references and present ideas, legal and scientific reasoning, and conclusions in both verbal and written form.
- Possess strong interpersonal and communication skills with an ability to distill and articulate technical concepts in order to communicate effectively with both university inventors and outside patent counsel across a broad range of technologies.
- An advanced understanding of patent law and prosecution strategy.
- Ability to set priorities and work within targeted time frames, as well as to multi-task working with different clients and different projects.
- Ability to work as a team member.
- Effectively work with faculty and have an understanding of the early nature of inventions that originate from universities.
- Ability to effectively work remotely initially and return to working on-campus when requested as well as drive among UConn’s various campuses.
- Ability to be responsive to the academic mission and priorities of the University.
- Experience working with academic inventors and understanding of the Bayh-Dole Act.
- Advanced (Ph.D. or MS) degree within the appropriate area of discipline, with broad scientific knowledge to facilitate working with inventors across multiple disciplines.
- Experience in the relevant engineering, physical sciences, and STEM areas for the physical sciences.
- 5 years of experience in related patent areas in a law firm or in-house position in a relevant industry.
- Strong background in intellectual property management and patenting.
- Experience managing outside patent counsel.
- Ability to file non-provisional patent applications in areas of domain expertise as appropriate.
- Experience in adverse proceedings (e.g., litigation, USPTO proceedings, EPO oppositions) is a plus.
- Be able to advise related to patent prosecution and filing and patent strategy to Associate VP.
This position is a full-time, management-exempt appointment. The University offers an excellent benefits package including medical and retirement, as well as employee and dependent tuition reimbursement at the University of Connecticut (outlined here: https://hr.uconn.edu/benefits-beyond-pay/). The target salary range for this position is $110,000 - $165,000, commensurate with qualifications and experience. The target start date for this position is as soon as possible.
TERMS AND CONDITIONS OF EMPLOYMENT
Employment of the successful candidate is contingent upon the successful completion of a pre-employment criminal background check.
Please apply online at https://hr.uconn.edu/jobs, Staff Positions, Search #496352 to upload a resume and cover letter that effectively demonstrate how the qualifications required for the position are met; as well as contact information for three (3) professional references. Screening of applications will begin immediately.
This job posting is scheduled to be removed at 11:55 p.m. Eastern time on July 4, 2022.
All employees are subject to adherence to the State Code of Ethics, which may be found at http://www.ct.gov/ethics/site/default.asp.
The University of Connecticut is committed to building and supporting a multicultural and diverse community of students, faculty and staff. The diversity of students, faculty and staff continues to increase, as does the number of honors students, valedictorians and salutatorians who consistently make UConn their top choice. More than 100 research centers and institutes serve the University’s teaching, research, diversity, and outreach missions, leading to UConn’s ranking as one of the nation’s top research universities. UConn’s faculty and staff are the critical link to fostering and expanding our vibrant, multicultural and diverse University community. As an Affirmative Action/Equal Employment Opportunity employer, UConn encourages applications from women, veterans, people with disabilities and members of traditionally underrepresented populations