Technology And Intellectual Property Management Specialist

Manage UTRGV's intellectual property portfolio, including patents, trademarks, and copyrightable works as per policies and procedures. Protect approved innovations by managing the process for the drafting, filing and prosecuting patent applications or applications for copyright protection on UTRGV intellectual property under the guidance of the Associate VP of Research Translation.

Description of Duties

• Receives initial technology disclosures and ensures completeness of the required information from the creators. Engages with creators, university administrators, and team members regarding the disclosed creations.

• Supports management decision-making by providing data to support the preparation of the Office of Research Translation's (ORT) internal and external reporting and planning requirements. Creates and runs reports to support ORT budget decision making and budget tracking and forecasting for outside counsel and other related expenses.

• Supports departmental workflow and efficiency through identification and configuration of technology management solutions. Oversees the implementation, configuration and integration of technology solutions for the ORT.

• Coordinates patent application drafting between inventors and attorneys, coordinates with licensees on desired filings, coordinates the development of strategies for office action responses, evaluates unlicensed patents prior to maintenance fee authorizations, and ensures patent budget resources are used effectively, and reviews and approves attorney's invoices for payment.

• Populates, organizes, monitors and maintains the technology solutions for all IP which includes submission and reporting for disclosures, patent applications, and patent prosecution capture and tracking, improving ORT customer service.

• Assists in the commercialization of innovations by conducting patent searches associated with UTRGV intellectual property and oversees the filing and prosecuting patent applications or applications for copyright protection on approved intellectual property.

• Captures, tracks, and communicates approved outside counsel communications and confirms ORT decisions are implemented. Coordinates the timely execution of legal documents for IP matters with United States Patent and Trademark Office (USPTO), Copyright Office and external legal counsel.

• Protects approved innovations by managing the process for the drafting, filing and prosecuting patent applications or applications for copyright protection on UTRGV intellectual property as per office procedures.

• Reviews outside counsel invoices to ensure compliance with UT Office of General Counsel (OGC) policies and recommends approval for payment to supervisor. Resolves OGC policy cost compliance issues including cost revisions as required by contract. Files necessary documentation required by the UT System OGC's office for Outside Counsel Contracts, and the Attorney General of Texas, bills licensees, and tracks revenue received from UTRGV licensees.

• Creates and runs reports to support ORT budget decision making and budget tracking and forecasting for outside counsel and other related expenses. Prepares invoices and tracks revenue received from licensees.

• Manages revenue accounts, ensures all relevant data is captured regarding inventor distribution agreements. Maintains documentation to support revenue distributions in compliance with UT System and UTRGV policies and procedures.

• Drafts initial Material Transfer Agreements (MTA) and Confidentiality Disclosure Agreements (CDA) for relevant intellectual property when working with a third party (i.e., another business).

• Prepares materials as necessary for provisional patent applications for new technologies based on disclosures by creators. Reviews drafts with the creators and ORT colleagues. Finalizes drafts and sends to outside counsel for review and approval. Facilitates the preparation and filing of copyright applications.

• Performs other duties as assigned.

Supervision Received

General supervision from assigned supervisor.

Supervision Given

Direct supervision of assigned staff.

Required Education

Bachelor's degree from an accredited university.

Preferred Education

NA

Licenses/Certifications

None.

Required Experience

Four (4) years of direct experience in intellectual property management, technology development analysis and processing, including knowledge of intellectual property development, patent, copyright law. Experience working with outside counsel on patent prosecution and review of invoices. Knowledge of United States Patent and Trademark Office (USPTO) and Copyright Office.

Preferred Experience

None.

Equipment

Use of standard office equipment. Knowledge of IP Docketing. Sophia or Inteum software experience, i-Edison reporting experience Patent Search Software such as Innography Knowledge of and experience with online IP references resources (PAIR, EPAS, TESS, TSDR) preferred.

Working Conditions

Needs to be able to successfully perform all required duties. Office Environment; some travel and weekend work is required.

Other

Exceptional planning and organizational skills.

Physical Capabilities

NA

Employment Category Full-Time Minimum Salary Commensurate with Experience Posted Salary Commensurate with Experience Position Available Date 03/21/2024 Grant Funded Position No If Yes, Provide Grant Expiration Date