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Application Review Date The First Review Date for this job is: December 12, 2018
Departmental Overview The Office of Intellectual Property and Industry Research Alliances (IPIRA) is the portal for industry access to Berkeley, both for research relationships and access to Berkeley technology. The Office of Technology Licensing (OTL) and the Industry Alliances Office (IAO) are peer divisions within IPIRA. The OTL manages and licenses patent and copyrights to the private sector for commercial development; is responsible for material transfer agreements for transfers from Berkeley; supports entrepreneurial activities including start-up company formation; maintains relationships with sources of private capital and service providers; provides litigation support; advises the IAO on intellectual property terms in research and other contracts, and advises the campus on intellectual property, innovation and entrepreneurship.
The IAO is responsible for a wide range of research relationships with industry, including industry-sponsored research agreements, collaboration agreements, membership agreements such as for industrial consortia, and incoming material transfer agreements.
Responsibilities Patent Prosecution Maintenance And Intellectual Property (IP) Agreements and Advising
Responsible for independently tracking, docketing and monitoring of actionable patent prosecution items. Receives, reviews, and analyzes patent prosecution matters including complex IP prosecution history, cross checking accuracy of information against internal patent tracking databases, data logs and correspondence. Creates and maintains electronic files and enters patent prosecution information into a database. Updates and tracks all patent-related actions (including attorney transfers, inventor portfolios, and licensee portfolios) and inputs data as necessary. Responsible for preparation of individual docket reports for Licensing Officers. Docket reports will track a volume of case related work items including filing history and key items to monitor. Proactively creates summary detail reports on status of filings, tracks prosecution deadlines and reviews licenses to ensure compliance on patent reporting and entity status. Meets with Licensing Officers to review their dockets for filing and non-filing decisions, inventor assignment assessments, obligations to sponsors and material providers and patent expense management.
Communicates to diverse groups information on patent prosecution concepts and address inquiries. Reports and makes recommendations for patent prosecution actions to licensing officers of record. Assists in the review of legal invoices.
Incumbent investigates and establishes with the licensing officers the appropriate new operational structures to implement best practices and process improvements for intellectual property portfolio administration/management. Diligently implements internal customized database to track intellectual property matters and facilitate reporting.
Analyzes, drafts, interprets, reviews and manages complex Intellectual Property (IP) agreements including License Agreements, Material Transfer Agreements (MTAs), Confidential Disclosure Agreements (CDAs), Inter-institutional Agreements (IIA), stock purchase agreements, and other IP agreements.
Reviews and analyzes legal language, ensuring all IP agreements are consistent with UC principles, policies and guidelines pertaining to IP, animal use, human subjects, sponsored research, conflict of interest, protected health information and export controls; and do not conflict with prior legal obligations in existing agreements.
Manages patent portfolio by monitoring IP protection, associated patent expenses; oversees marketing and licensing activities associated with Intellectual Property assets.
Reviews complex nonprofit, industry-sponsored, and collaborative research agreements to determine third-party obligations for invention disclosures.
Maintains a current working knowledge of IP laws, applicable UC policies and guidelines.
Communicates extensively with faculty, staff, students, external attorneys, paralegals, managers, administrators and researchers at companies, universities and nonprofit organizations.
Mentors, trains and reviews the work of other IP Analysts and license specialists.
Oversees and manages intake and process flow of licensing agreements. Tracks and updates information, progress, actions and deadlines, developing systems if necessary.
Assists officers and Sr. Director with moving all license negotiations forward by helping track status of negotiations on central database and assist with turning drafts of agreements. Prepares agreements for execution, editing content for spelling and grammar along with ensuring consistency of case file and routing of agreement for needed signatures.
Independently query ad hoc reports from Patent Tracking System (PTS)
Assists officers with communications to inventors, licensees and industry. Helps officers prepare for inventor meetings with background and strategies for business development.
In close coordination with Licensing Officer, prepares agreement modifications.
Updates and maintains current boilerplate agreement templates.
Carefully examines agreements for terms and conditions. Creates a checklist for all relevant terms and conditions that will require follow-up throughout the life of the agreement. Once completed, inputs the required information into PTS.
Provides more advanced analysis and support for agreements involving start-ups and company equity. Carefully examines agreement to advise Licensing Officers of future obligations, and maintains calendar to ensure deadlines are met in a timely manner.
Communicates with inventor(s) to verify the source of research support and/or materials provided to obtain specific contract/grant/Material Transfer Agreement information necessary for determination of rights and obligations.
High Level and Advanced Analytical and IP Assignments
Performs other high-level and advanced analytical IP assignments using independent and discretionary judgment, such as updating boilerplate IP language in IP Agreements; creating and updating standard IP forms; and preparing, analyzing and managing complex legal documents within strict legal deadlines and legal procedures.
Research and produce complex statistical, analytical and database reports and presentations regarding material transfer, patenting and licensing activity as requested.
Maintain a contract workload negotiating, executing and administering certain basic License Agreement on behalf of The Regents of the University of California. Under the direction and with the support of the Licensing Officers, review license agreements, option agreements, and confidentiality contracts to ensure that terms and conditions protect the University's rights, adequately address the responsibilities of the parties, and are consistent with University policies and/or objectives.
Manage review, negotiation and execution of contractual modifications.
Maintain data integrity of electronic records related to License agreement and related documents.
Preparation of Marketing Material And Post-Agreement Management
Drafts and/or reviews and uploads non-confidential disclosures, marketing plans and other related documents that promote the commercial potential of new inventions.
Oversees and manages post-agreement management which monitors all milestones and payments. Ensures that Licensing Officers are informed of potential areas of default related to the agreement. Provides support in communicating with the licensee by drafting letters and correspondence to bring agreement up-to-date.
Creates spreadsheets to support accounting of agreement financial terms and conditions.
Recommends expiration of agreements after ensuring that all milestones have been met, and contractual payments are current. Composes or ensures letters are composed to advise licensees of delinquencies prior to agreement expiration.
Oversees updating of patent and license database and ensures databases are accurate.
Ensures Licensing Officer and Licensee is notified of agreement related issues, from expiration to overall compliance.
Monitor Intellectual Property Laws, Policies And Other Duties
Be the primary point of communication with potential licensees for CDAs, MTAs, and the provision of confidential information about technologies and patent applications, and other University of California Intellectual Property assets.
Interfaces with UCOP accounting, patent prosecution and other staff regarding financial and due diligence terms and conditions.
Performs other duties as required.
Knowledge of common campus-specific and other computer application programs. Analytical/problem-solving skills.
Strong communication and interpersonal skills to communicate effectively with all levels of staff; both verbally and in writing.
Strong skills in analyzing and synthesizing large amounts of data for preparing sound and relevant reports.
Ability to multi-task with demanding timeframes.
Ability to use discretion and maintain all confidentiality.
Experience analyzing, interpreting, reviewing, negotiating and managing complex MTAs, CDAs, licenses, IIAs, other IP agreements and complex legal documents
Experience performing high level analytical assignments; comprehending and employing legal and IP law terminology
Oral and written interpersonal communication skills to advise and counsel internal and external clients
Experience with patent and contract law, contract terminology, legal terminology and managing and processing contracts
Experience exercising discretion, integrity and sound judgment to manage and protect IP and confidential information
Decision making skills to prioritize tasks, manage time, anticipate problems, manage multiple projects and meet multiple deadlines
Experience with computer software such as MS Word, , MS Excel, MS PowerPoint, Internet access software
Bachelor's degree in related area and/or equivalent experience/training
Demonstrated ability to maintain workflow with changing priorities and frequent interruptions and to organize and prioritize fluctuating workloads
Ability to handle highly confidential and proprietary information and to maintain confidentiality in office operational transactions
Demonstrated ability to communicate in a helpful, diplomatic, effective and informative manner by telephone or in person on a one-to-one basis or within small groups
Education or experience in life sciences, physical sciences, engineering, business or law, or demonstrated equivalent competencies based on employment history
UC experience working with MTAs, CDAs and other IP agreements, and knowledge of UC principles, policies and practices pertaining to MTAs, CDAs, licenses and other IP agreements
Knowledge to comprehend and apply UC principles, policies and guidelines pertaining to material transfer, research, confidentiality, publication, licensing and IP
Knowledge of patent law and licensing practices
Skills to understand, research, analyze, compile, organize and present complex technical and legal material to sponsor representatives, legal representatives, faculty and staff in a clear and concise manner
How to Apply Please submit your cover letter and resume as a single attachment when applying.
Conviction History Background This is a designated position requiring fingerprinting and a background check due to the nature of the job responsibilities. Berkeley does hire people with conviction histories and reviews information received in the context of the job responsibilities. The University reserves the right to make employment contingent upon successful completion of the background check.
The University of California was chartered in 1868 and its flagship campus - envisioned as a "City of Learning" - was established at Berkeley, on San Francisco Bay. Today the world's premier public university and a wellspring of innovation, UC Berkeley occupies a 1,232 acre campus with a sylvan 178-acre central core. From this home its academic community makes key contributions to the economic and social well-being of the Bay Area, California, and the nation.