Patent Agent in Office of Licensing and Venture

Location
North Carolina, United Sates
Posted
28 Nov 2018
End of advertisement period
28 Jan 2019
Ref
401514216
Contract Type
Permanent
Hours
Full Time

Job Description

Ideal candidate A Bachelor's degree in a STEM discipline (Masters or Ph.D. preferred if for life science, pharmacy, chemistry disciplines) Licensed to practice before the U.S. Patent and Trademark Office (or a commitment to become so licensed within 24 months of date of hire).

Occupational Summary

  • Working directly with the Office of Licensing and Venture's (OLV's) in- house patent counsel, licensing directors, outside counsel and inventors, develop patent filing strategies that maximize commercial potential of inventions, prepare/file provisional patent applications and assist outside counsel on the preparation of office action responses.
  • OLV is responsible for patents, technology licenses and new venture development for Duke University. Through direct, daily interaction with faculty, small and large businesses, and venture investors, we build strong relationships and enter into agreements to translate academic discoveries into commercial products that benefit society, impact public health, and improve the quality of life.

Work Performed

  • Develop patent filing strategies that maximize commercial potential of inventions. Prepare claims sets and assessments as needed. (Note: the Associate Director-Legal and the Executive Director of OLV have final approval rights for all patents to be filed.
  • Prepare and file provisional patent applications.
  • Assist the Associate Director-Legal in performing inventorship determinations as needed.
  • Design and perform prior art searches.
  • Coordinate with outside counsel on conversion and/or ongoing prosecution of pending patent applications.
  • Work with University inventors and Licensing Directors to review USPTO Office Actions and prepare/review responses.
  • Assist the Assocaite-Driector-Legal with the development and implementation of patent database/docketing systems, patent billing and patent budgeting processes.
  • Assist the Associate Director-Legal with presenting intellectual property seminars to faculty, staff and students;
  • Assist/Advise the Executive Director, Associate Director-Legal and/or Associate Directors on IP related sections of licensing and/or other legal documents as needed.
  • Perform other related duties incidental to the work described herein.
  • The above statements describe the general nature and level of work being performed by individuals assigned to this classification.
  • This is not intended to be an exhaustive list of all responsibilities and duties required of personnel so classified.

Requisition Number: 401514216
Location: Durham
Duke Entity: MEDICAL CENTER
Job Code: 2198 PATENT AGENT
Job Family Level: 14
Exempt/Non-Exempt: Exempt
Full Time / Part Time: FULL TIME
Regular / Temporary: Regular
​Shift: First/Day

Minimum Qualifications

Duke University is an Affirmative Action/Equal Opportunity Employer committed to providing employment opportunity without regard to an individual's age, color, disability, gender, gender expression, gender identity, genetic information, national origin, race, religion, sex, sexual orientation, or veteran status. Duke aspires to create a community built on collaboration, innovation, creativity, and belonging. Our collective success depends on the robust exchange of ideas, an exchange that is best when the rich diversity of our perspectives, backgrounds, and experiences flourishes. To achieve this exchange, it is essential that all members of the community feel secure and welcome, that the contributions of all individuals are respected, and that all voices are heard. All members of our community have a responsibility to uphold these values.

Essential Physical Job Functions:

Certain jobs at Duke University and Duke University Health System may include essential job functions that require specific physical and/or mental abilities. Additional information and provision for requests for reasonable accommodation will be provided by each hiring department.

Education

A Bachelor's degree in a STEM discipline (Masters or Ph.D. preferred if for life science, pharmacy, chemistry disciplines) Licensed to practice before the U.S. Patent and Trademark Office (or a commitment to become so licensed within 24 months of date of hire).

Experience

Four years patent law and/or procedure experience performing similar tasks in an academic, government, industrial and/or law firm environment. Candidates who possess an advanced degree, which exceeds the degree minimum requirement, may count the additional education obtained from the degree completion towards the minimum work experience qualifications.

Ideal candidate will have a STEM Masters or PhD degree and be licensed to practice before the US Patent & Trademark Office (i.e,  have passed the US Patent & Trademark Office’s patent bar exam).

Skills:

  • Excellent writing skills
  • Strong collegial interpersonal skills exercising diplomacy with an ability to communicate effectively in person and through other communication mediums.
  • Ability to work independently and/or within various organizational teams.
  • Highly organized with attention to detail and thoroughness in completing assigned duties.
  • Collaborative problem solver who can take initiative and set priorities while being flexible.
  • Understanding of the university technology transfer process.

Auto req: ID106523BR