Job Requisition Number: 24572. 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.
PATENT APPLICATIONS AND MAINTENANCE PATENT CORRESPONDENCE Under general supervision, the Licensing Specialist generates correspondence and documents to outside patent counsel, and prepares correspondence and documents from draft to final execution using information supplied by the Licensing Officers. Reviews and ensures that each document is complete and accurate. Analyzes all incoming documents from law firms for actionable items. Performs necessary actions when required, for example, obtaining signatures, entering information in the University’s proprietary Patent Tracking System (PTS) database, completing government and grant reporting requirements, conferring with licensees or others about continued prosecutions and electronically filing documents. Provides OTL staff assistance in patent application and maintenance procedures. Calendars patent prosecution deadlines for domestic and foreign patent applications. Communicates with outside patent counsel to resolve problems of limited scope. Serves as a liaison between UC Berkeley’s Office of Technology Licensing and various campus departments, UC Berkeley’s Sponsored Projects Office, LBNL, LLNL, LANL and technology transfer offices at other Universities.
PREPARATION AND MAINTENANCE OF LEGAL DOCUMENTS Ensures that legal documents prepared for Licensing Officers', Director's, and Inventors' signatures are correct and in accordance with the UCOP General Counsel’s policies. Obtains signatures on legal documents. This position requires knowledge of the process for filing, securing, and maintaining patent rights. Responsible for the integrity and completeness of all invention disclosure records and files.
PROSECUTION DATABASE INPUT AND MAINTENANCE Responsible for the timely input of all information concerning prosecution of domestic and foreign utility patent applications in PTS in order to allow review, tracking, and report generation for patent prosecutions. Dockets future action dates with respect to government reporting obligations, statutory bars, maintenance fee schedules, and other patenting actions. Maintains and updates the PTS name/address file, ensuring its integrity and accuracy.
PATENT MAINTENANCE AND ANNUITIES On an ongoing basis, tracks the payment of annuity and maintenance fees for all issued U.S. patents and all foreign applications. Ensures that all such patents and applications are reported to our annuity docketing service. Resolves any problems with reporting. This is a critical function because nonpayment of an annuity or maintenance fee may result in the loss of the University’s patent rights.
TECHNOLOGY LICENSING AND MARKETING PREPARATION OF LICENSING DOCUMENTS AND CORRESPONDENCE Maintains a computer library of boiler-plate license and contract agreements. Drafts agreements incorporating specific details negotiated by the Licensing Officers. Proofreads and edits license agreements for proper language and formatting. Under the direction of the Licensing Officers, modifies draft agreements to reflect the specific terms and conditions required for each license. Drafts Secrecy Agreements in response to company requests for confidential information and provides those companies with copies of invention disclosures upon execution of the secrecy agreement. Processes all executed agreements in accordance with established office procedures (routing for signatures, logging, filing, database input, returning fully executed original to Licensee). Prepares documents in accordance with University procedures for accepting equity in a licensed company. Communicates with the UC Office of the Treasurer regarding the taking of equity, follows UC guidelines for the approval and acceptance of equity in connection with the signing of a license agreement (submit relevant documents for approval, submit stock certificate for safekeeping). Generates copyright/software agreements and follows up with author when fee is received.
LICENSING DATABASE INPUT AND MAINTENANCE Extracts information from executed agreements and organizes and prepares agreement summary information for input into PTS. Such information includes agreement control numbers, effective and expiration dates, invention identification numbers, dates for progress reporting, payment obligations, and other pertinent information relevant to the terms and conditions of the Agreement. Maintains follow-up system including updating of electronic calendar reminders. Data entered is used for preparing annual report for the Regents and for billing/accounting purposes.
COMPLIANCE Prepares and distributes monthly reminders to licensees to submit progress reports in accordance with the provisions of their agreements with the University. Record licensee’s response in the patent tracking system and alert the case manager of any instances of noncompliance.
GENERAL LICENSING SUPPORT Performs other clerical and administrative duties supplemental to licensing activities on a continuing and/or project basis.
PREPARATION OF MARKETING DOCUMENTS AND CORRESPONDENCE Serves as a liaison for inquiries regarding licensable technologies. Provides information on available technologies to companies, which corresponds to their expressed commercial interest. Assists in the marketing of new innovations by drafting Non-Confidential Disclosures (NCDs) of inventions disclosed by UC inventors. After review by the Licensing Officer, the Licensing Specialist posts the NCD on the IPIRA website for public view. The Licensing Specialist also maintains the NCD database, adding and removing postings as needed.
GOVERNMENT/COMMERCIAL/AND RELATED SPONSORSHIP REPORTING Under general direction, independently generates reports and correspondence to federal agencies as required by federal law to maintain invention rights. Notifies federal agencies of changes in the licensing and patenting status of an invention utilizing the iEdison online government reporting system. Prepares confirmatory licenses to the federal government, modifying and updating them to reflect changes in the prosecution status for sponsored inventions. Provides reports to commercial, foundation, or other non-profit sponsors per their contract requirements. Prepares final reporting documents for signature by the Director, reviewing for conformity and completeness.
DATA MANAGEMENT Maintains the integrity, completeness and consistency of the Patent Tracking System (PTS). Establishes and maintains complex e-filing system for prosecution, marketing, negotiation, licensing, campus case, and research agreement documents and correspondence.•Ability to learn about and gain (1) a basic understanding of the process to secure patent rights in the US and internationally; and (2) a solid understanding of OTL IP rights agreements including licenses and options. •Required skills include strong verbal and written communication skills, •Strong attention to detail, •Experience with use of office software applications (i.e. MS Word, Excel, PowerPoint, and Email) as well as reliable maintenance of databases.
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.