The University of Connecticut (UConn) is committed to advancing technology-based innovation and commercialization. As a part of expansion of the roles and responsibilities of the Technology Commercialization Services (TCS) with an aim to support faculty and manage protection and commercialization of intellectual property (IP) generated at UConn, the Office of the Vice President of Research is seeking two qualified, energetic patent agents or patent attorneys for the new positions of Senior Manager, Intellectual Property, Life Sciences/Physical Sciences to join the TCS team.
The positions will have dual reporting. For Life sciences, the position will report to the Director of Licensing and Venture Development and the Associate Vice President of Innovation & Entrepreneurship; and for Physical sciences, the position will report to the Director of Licensing, Physical Sciences and Associate Vice President of Innovation & Entrepreneurship respectively. The ideal candidates for these positions will be a self-starters, 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 their areas of specialization, which include:
Life Sciences and Biotechnology (1 position)
Physical Sciences and Engineering (1 position)
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 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 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.
Negotiate, draft and process Material Transfer Agreements (MTAs), Data Transfer Agreements (DTAs) and Confidential Disclosure Agreements (CDAs).
Participate in team-based review meetings for decisions on patenting and commercialization of inventions and present inventions for review as needed.
Participate in discussions, advise and support decisions pertaining to the formation of University start-up companies with regard to IP protection and review of 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.
Admission to the United States Patent and Trademark Office Bar with experience filing patent applications and responding to office actions.
Advanced (Ph.D. or MS) degree within appropriate area of discipline, with broad scientific knowledge to facilitate working with inventors across multiple disciplines.
Minimum of one or two 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.
Must 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 both team leader and team member.
Effectively work with faculty and have understanding of the early nature of inventions that come out 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.
For the Life Sciences and Biotechnology position, experience in clinical development, medical devices, diagnostics, software, manufacturing and/or drug delivery is strongly preferred; or for the Physical Sciences and Engineering role, experience in material science, manufacturing, cybersecurity, software, energy systems, and or sensors is strongly preferred.
3-5 years of experience in related patent areas in a law firm or in-house position in relevant industry.
Strong background in intellectual property management and patenting.
Experience managing outside patent counsel.
J.D. and or Ph.D. a plus.
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.
Both positions are full-time, management-exempt appointments. 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/). Screening of applications will begin immediately and continue until the position is filled, with a target start date of as soon as possible.
Please apply online at https://hr.uconn.edu/jobs, Staff Positions, Search #494852 to upload aresume, cover letter,and contact information forthree (3) professional references.
Employment of the successful candidate is contingent upon the successful completion of a pre-employment criminal background check.
This job posting is currently scheduled to be removed at 11:55 p.m. Eastern time on November 29, 2020.
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.
See Job Description
Internal Number: 494852-2276_1604138695
About University of Connecticut
The University of Connecticut is a national leader among public research universities, with more than 30,000 students seeking answers to critical questions in classrooms, labs, and the community. A culture of innovation drives this pursuit of knowledge throughout the University’s network of campuses. Connecticut’s commitment to higher education helps UConn attract students who thrive in the most competitive environments, as well as globally renowned faculty members. Our school pride is fueled by a history of success that has made us a standout in Division I athletics. UConn fosters a diverse and vibrant culture that meets the needs and seizes the opportunities of a dynamic global society.