Patent Coordinator/Senior Patent Coordinator

Location
Champaign, IL
Posted
Sep 30, 2017
Institution Type
Four-Year Institution

Job Category: Academic Professional Academic Professional
Location: Chicago

Description:

University of Illinois

Office of Technology Management

Patent Coordinator/Senior Patent Coordinator

Chicago Campus

The University of Illinois seeks a Patent Coordinator/Senior Patent Coordinator to manage resources to secure intellectual property protection for technologies being pursued by the Office of Technology Management (OTM) at the University of Illinois at Chicago (UIC). Additional responsibilities include:



Duties:

1. Coordinate the filing, prosecution and maintenance of US and foreign patent applications and other legal protection of UIC technologies.

2. Draft and file fully enabled provisional patent applications with the USPTO.

3. Work with OTM technology managers, UIC student analysts and UIC inventors during the technology evaluation and patenting process, including: assisting in assembly of supporting data and documentation, reviewing patent search results, drafting and filing US provisional patent applications, monitoring preparation and filing of patent applications by outside counsel, providing assistance in responding to patent office actions, and providing recommendations regarding US and foreign patent processes, costs, and alternatives.

4. Serve as a liaison between OTM, University Counsel, and outside patent counsel regarding the selection, engagement process and authorization/approval of expenditures for outside counsel.

5. Assist Senior Patent Coordinator in the review and approval legal invoices for patent prosecution services.

6. Assist with drafting patent licenses and other intellectual property agreements.

7. Monitor actions and scheduled due dates for US and foreign patent process to ensure timely responses.

8. Manage inventorship, ownership, and assignment issues and decision-making, including: preparing and processing formal PTO papers for inventors, coordinating with inventors to obtain appropriate approvals, and coordinating execution of formal papers with legal counsel.

9. Maintain and organize patent case files.

10. Keep abreast of changes in patent laws and procedures, in particular any patent reform.

11. Work with patent counsel to manage patent costs.

12. Train and mentor support staff as needed, provide ongoing training and updates on patent subjects.

13. Review correspondence with patent counsel and take appropriate actions as required.

14. Participate in the development of OTM infrastructure, policies, and procedures.

15. Oversee accuracy and completeness of database patent or patent-related records.

16. Assist Senior Patent Coordinator in overseeing all aspects of Federal Compliance, including managing a graduate hourly student that will be responsible for timely reporting obligations of the University related to inventions derived from federally funded research.

17. Prepare reports as needed from database records on patent and patent-related matters.

18. Serve as Notary Public for OTM.

19. Other duties appropriate for a Patent Coordinator/Senior Patent Coordinator.



Qualifications:

Candidates must possess a bachelor's degree in a business or technical field with current valid registration with the USPTO as Registered Patent Agent or Patent Attorney and a minimum of three (3) year's relevant professional experience in business, academic, or government, including the licensing of technologies. Other requirements include: successful experience related to the practice of patent law with a preference for experience as a practicing Patent Agent or Patent Attorney in the drafting and prosecution of patent applications; excellent verbal and written communications skills to effectively interact with University and departmental officials/staff; including the ability to manage confidential information; ability to work in a fast-paced environment under multiple deadlines; strong interpersonal skills to effectively communicate with all levels of professionals within the organization; proven teamwork skills including the ability to relate to and work with support staff, pre-professional staff and student interns; ability to use independent judgment and negotiating skills to make sound decisions regarding patents and intellectual property; proficiency with Microsoft Office suite applications; ability to work independently and in a team situation in a highly complex and business-like setting; ability to develop and maintain strong relationships with faculty inventors, prospective inventors, and industry clients.

Preferred requirements include: J.D.; technical background in a research area aligned with the technology portfolio; licensing and technology marketing or related experience may be considered in lieu of advanced degree requirement; strong working knowledge of intellectual property law and industry-standard licenses, including royalty rates and license structures.

This is a full-time, 12-month Academic Professional position. For full consideration, candidates must apply and submit a letter of application, resume, and names/addresses/phone numbers of three professional references by October 19, 2017 at https://uajobs.hr.uillinois.edu/.

The University of Illinois conducts background checks on all job candidates upon acceptance of a contingent offer of employment. Background checks will be performed in compliance with the Fair Credit Reporting Act.

HR Service Center

809 S. Marshfield Ave

MC 078

Chicago, IL 60612

(312) 996-5130

The University of Illinois is an affirmative action/equal opportunity employer dedicated to building a community of excellence, equity and diversity. The System Offices welcome applications from women, underrepresented minorities, individuals with disabilities, protected veterans, sexual minority groups and other candidates who will lead and contribute to the diversification and enrichment of ideas and perspectives.



Close Date: 10/19/2017

PI99616662