Intellectual Property Manager

Location
California, United States
Posted
18 Jul 2019
End of advertisement period
18 Sep 2019
Ref
83955
Academic Discipline
Social Sciences, Law
Contract Type
Permanent
Hours
Full Time

The Office of Technology Licensing at Stanford University seeks an Intellectual Property Manager, who will be responsible for overseeing and managing all aspects of protecting Stanford’s intellectual property (IP) that is disclosed to the Office of Technology Licensing, including the preparation, prosecution and maintenance of patent applications by outside IP counsel and annuity firms; preparing and filing provisional patent applications with the United States Patent and Trademark Office (USPTO); conducting IP landscape and other IP related research and analysis; coordinating and overseeing IP-related litigation on behalf of the OTL; and managing a team of IP staff.

The Office of Technology Licensing (OTL) was established in 1970 to manage the intellectual property assets of Stanford University. OTL evaluates, markets, and licenses technology owned by the University. OTL's mission is to encourage effective technology transfer for the public benefit as well as generating royalty income for Stanford to benefit research and education. OTL is one of the country's most active offices in the field of technology transfer from the university to industry. Our staff, most of whom are professionals engaged directly in licensing, manages over 3,000 active dockets. OTL will move from Palo Alto to the new Stanford Redwood City campus in July 2019. The new Stanford Redwood City campus brings together 2,700 staff in a collaborative environment that reflects Stanford’s culture and mission. The campus will offer amenities such as onsite cafes and a dining pavilion, a high-end fitness facility with an outdoor pool, and a childcare center for Stanford families.

CORE DUTIES*

  • Direct staff and provide leadership to achieve goals and vision of the organization and the day-to-day operations. Responsible for hiring and retaining staff, career coaching, professional development and accountable for the performance of employees.
  • Provide expertise on all the principal OTL types of intellectual property (IP) protection, including patents, copyrights, trademarks and other forms of IP.
  • Oversee the preparation, drafting, filing, prosecution and maintenance of Stanford’s IP by outside IP counsel and annuity firms, including managing the attorney-client relationship by maintaining effective working relationships, setting performance expectations and monitoring quality.
  • Manage, and draft and file provisional patent applications upon special request from Technology Licensing Associates (TLAs), and manage and respond to all related USPTO official actions and communications.
  • Establish cost control mechanisms, and monitor and manage patenting costs for the OTL IP portfolio. Develop best practices and processes for procuring and managing IP protection.
  • Assess patentability and conduct IP landscape searches; identify any potential prior art and freedom to operate issues and advise TLAs and Stanford inventors accordingly. Coordinate and oversee IP-related litigation on behalf of the OTL.
  • Develop and maintain effective communications and working relationships with Stanford inventors, licensees and TLAs to ensure that drafting and prosecution strategies are aligned with the overall commercial strategy for the IP.
  • Ensure effective communication and collaborative working relationships between the patent staff and other OTL functions, including licensing, sponsor compliance, finance, business development and marketing, and any IP-related reporting needs of the OTL.
  • Maintain USPTO patent agent registration, keep current on IP trends and new developments in IP law affecting all forms of IP protection, and recommend IP protection and enforcement strategies accordingly.
  • Provide educational materials and presentations to OTL staff, as well as the wider Stanford community, on IP-related matters, case law and current trends on an ongoing basis.

*Other duties as may be assigned.

MINIMUM REQUIREMENTS:

  • Master’s degree and ten years of experience in managing a large IP portfolio, preferably in a commercial entity or global law firm, and including at least three years within a U.S. or global law firm successfully drafting and prosecuting patent applications to issuance, or an equivalent combination of education and relevant work experience.

Knowledge, Skills and Abilities:

  • Current and extensive knowledge of U.S. and foreign intellectual property law, especially patent and copyright law.
  • Experience developing, training and managing a team of staff in intellectual property matters.
  • Strong technical analysis and synthesis skills.
  • Excellent oral and written communication skills.
  • Strong project management, planning, and coordination skills.
  • Excellent interpersonal skills and proven ability to collaborate effectively with teams spanning multiple functions, departments and levels.
  • Exceptional attention to detail, coupled with a demonstrated ability to provide effective strategic counsel on overall patenting strategy.
  • Proven ability to prioritize a multitude of competing projects and manage a large volume of IP matters in a fast-paced environment, with timely communications to all stakeholders and without missing any filing or patent office deadlines.

Certifications and Licenses:

Must have passed the U.S. Patent Bar exam and registered to practice as a Patent Agent with the U.S. Patent Trademark Office (USPTO).

PHYSICAL REQUIREMENTS*:

  • Frequently perform desk-based computer tasks, seated work and use light/ fine grasping.
  • Occasionally stand, walk, use a telephone, lift, carry, push, pull objects that weigh up to 10 pounds.
  • Rarely writes by hand.

*- Consistent with its obligations under the law, the University will provide reasonable accommodation to any employee with a disability who requires accommodation to perform the essential functions of the job.

Stanford University is an equal employment opportunity and affirmative action employer and is committed to recruiting and hiring qualified women, minorities, protected veterans and individuals with disabilities.

Background check will be required for all final candidates.

Additional Information

Schedule: Full-time
Job Code: 4513
Employee Status: Regular
Grade: L
Requisition ID: 83955