PATENT PORTFOLIO MANAGER - CHEMISTRY
|Req #: ||140052 |
|Department: ||CoMotion |
|Job Location: || University District |
|Job Location Detail: ||CoMotion Innovation Center, Box 354950 4545 Roosevelt Way NE, Suite 400, Seattle, WA 98105 |
|Posting Date: ||12/02/2016 |
|Closing Info: || Open Until Filled |
|Salary: || |
Salary and benefits are competitive. Salary is commensurate with qualifications and experience.
| The University of Washington (UW) is proud to be one of the nation's premier educational and research institutions. Our people are the most important asset in our pursuit of achieving excellence in education, research, and community service. Our staff not only enjoy outstanding benefits and professional growth opportunities, but also an environment noted for diversity, community involvement, intellectual excitement, artistic pursuits, and natural beauty. |
The mission of UW CoMotion is to make the University of Washington the best place in the world to do research by providing unparalleled support to our entrepreneurial researchers. We have an outstanding opportunity for a Patent Portfolio Manager - Chemistry (PPM) in the Innovation Intellectual Property (IIP) unit to support the Director in the management of the unit's operations. The PPM works closely with the Director to build and implement programs and metrics to meet the goals of the unit and fulfill the vision of the CoMotion.
The Patent Portfolio Manager is in charge of the preparation, filing, patent searches, and patent maintenance in connection with patents filed on UW technology as a result of the University's research activities. The PPM reports to the Director, Innovation Intellectual Property, and works closely with other staff of CoMotion and with the Attorney General's Office.
This position has significant responsibility for providing expertise in patent decisions and investment, and for the effectiveness with which resources are allocated, including time and legal expenditures. The position, in collaboration with the Director, Innovation IP, develops strategies for the effective management of CoMotion's investment in patent prosecution which constitutes a significant portion of the department's annual budget.
CoMotion receives IP assets upon disclosure, and has stewardship of the asset until it is abandoned or lapses, or until title or control is transferred to a third party. It has responsibility for transferring to third parties title or control of IP assets which are not under active marketing or contract management; for waiving rights back to the federal government for IP assets developed in part with federal funding; and for coordinating management of IP assets in which UW is a joint owner.
The Patent Portfolio Manager conducts patent searches and drafts, prepares and files a significant number of patent applications based on invention disclosures from UW researchers, faculty and staff (inventors), and manages the patenting process. These patent filings, as well as issued patents maintained by CoMotion, can have significant impact on the strategic thrusts, business decisions, budget and revenue of CoMotion and the University. Most importantly, this position will need to ensure that CoMotion's and the University's goals and mission are considered and protected in relation to patent decisions and management.
In close collaboration with the Innovation IP Director, the position provides expertise in evaluating present practices; develops new initiatives and procedural efficiencies, and will provide guidelines on projects that do not warrant further allocation of University resources.
The position assists the Director in the review and formation of policy and procedures, and in developing strategies for improving the management of intellectual property.
The Patent Portfolio Manager exercises independent judgment and discretion in the performance of the position's functions and has delegated authority from the Director, Innovation IP to make necessary commitments that will affect the operations of the department.
The Patent Portfolio Manager duties and responsibilities will include:
1. Evaluation of invention disclosures from UW researchers;
2. Conduct patent landscape searches and provide an appropriate review;
3. Development of patent drafts with claims of appropriate scope;
4. Prepare and file U.S. patent applications;
5. Manage outside counsel and patent portfolios;
6. Review relevant third party patents/patent publications;
7. Work with outside legal counsel to initiate third party observations or oppositions for patents/patent applications;
8. Prepare voluntary claim amendments, office action responses, and appeal briefs as required for pending patent applications;
9. Review patent portfolios (patent mapping) with each business segment periodically and identify issued patents and pending patent applications that do not provide value and therefore do not require further investments;
10. Ability to educate and advise inventors and CoMotion staff on patent strategy;
11. Ability to build strong relationships and trust with inventors and CoMotion staff;
12. Ability to assist inventors with invention disclosures, conduct inventor interviews to harvest new ideas/other disclosures;
13. Ability to provide detailed patent research and continuous updates and filings;
14. In coordination with the Innovation IP Director, ensure alignment of business strategy, technical direction, and IP strategy;
15. In coordination with the Innovation IP Director, effectively manage the patent prosecution budget;
16. Evaluate the management of non-Provisional/PCT patent applications prepared, filed and prosecuted by outside counsel;
17. Mentor legal externs/interns; and
18. Work with other units in CoMotion for filing decisions, maximizing the scope of patent protection in alignment with the goals of CoMotion.
This position has significant responsibility for providing expertise in patent decisions and investment, and for the effectiveness with which resources are allocated, including time and legal expenditures.
The position, in collaboration with the Innovation IP Director, develops strategies for the effective management of CoMotion's investment in patent prosecution which constitutes a significant portion of the department's annual budget.
| Bachelor's degree or higher in appropriate technical area |
Five (5) years' experience in a law firm or an intellectual property office.
Experience as a Patent Agent or Patent Attorney.
Experience in perfecting intellectual property rights and knowledge of federal and state laws, rules and procedures regarding intellectual property, including patents, copyright, and trade secrets.
Equivalent education/experience will substitute for all minimum qualifications except when there are legal requirements, such as a license/certification/registration.
| Experience in working collaboratively with researchers and industry. |
Familiarity with the Bayh-Dole Act and its process requirements for the University of Washington.
Knowledge of UW policies and guidelines required in the protection of intellectual property through patents, copyright, trademark, etc.
Knowledge of requirements from federal funding agencies, including marking patents, software, and products, and US embargo restrictions.
Knowledge of and experience in international IP protection, including PCT filings and conversions.
|CONDITION OF EMPLOYMENT:|
| The position will require occasional travel and weekend and evening meetings. |
Cubical/Open workspace environment.
Appointment to this position is contingent upon obtaining satisfactory results from a criminal background check.
As a UW employee, you will enjoy generous benefits and work/life programs. For a complete description of our benefits for this position, please visit our website, click here.
The application process for UW positions may include completion of a variety of online assessments to obtain additional information that will be used in the evaluation process. These assessments may include Work Authorization, Criminal Conviction History, Cover Letter and/or others. Any assessments that you need to complete will appear on your screen as soon as you select Apply to this position. Once you begin an assessment, it must be completed at that time; if you do not complete the assessment, you will be prompted to do so the next time you access your My Jobs page. If you select to take it later, it will appear on your "My Jobs" page to take when you are ready. Please note that your application will not be reviewed, and you will not be considered for this position until all required assessments have been completed.