Description

Job Description:
 

Why should you want to work with us? You could work anywhere, but you choose to work with us because you want to make a difference in the world by challenging yourself creatively, being part of a close-knit team that works hard and always has each other's backs. You seek an opportunity to make life-changing impacts that touch people across the world and want to pursue your dream job that applies your unique skills to defining the future of technology development in New York and beyond.

FUNCTION & SCOPE:

The Research Foundation for The State University of New York (RF) seeks an Intellectual Property Paralegal and Federal Compliance Coordinator to support the Innovation and Partnerships (I&P) team in delivering technology transfer and commercialization support services to SUNY faculty, staff, students, and external partners. This position will report to the Manager, Intellectual Property Assets and will work directly with technology evaluation, intellectual property, and business development professionals, entrepreneurs, and inventors across the SUNY enterprise to move technology to market. This position is primarily responsible for the management and maintenance of an intellectual property portfolio.

You will proactively partner with professionals and inventors from across SUNY to develop and implement processes and procedures to ensure diligent stewardship of SUNY's intellectual property portfolio. You will guide the team in setting priorities to ensure no intellectual property prosecution deadlines are missed. You have an overwhelming sense of pride in your work and you will provide superior customer service when interacting with research teams and inventors, administrators, and governmental and non-governmental partners to ensure all compliance issues are timely addressed.

Through direct, daily interaction with technology commercialization professionals across the enterprise, 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 quality of life. If you are detail-oriented, self-motivated, service-focused, curious, enthusiastic about technology, well organized, decisive, collaborative, and energized by working with inventors and commercialization teams, this is a great opportunity for you.

DUTIES:

Patent Prosecution Support

• Experience and familiarity with United States Patent and Trademark Office (USPTO) procedures and the USPTO Patent Center (USPTO electronic filing system) is preferred
• Experience and familiarity with ePCT (WIPO PCT Filing Request system) is preferred
• Experience with preparation of patent applications (e.g., patent drawing changes, filing transmittals), is strongly preferred.
• Prepare and file US and foreign patent applications (provisional, non-provisional, PCT, national phase) under attorney supervision.Draft and manage formal documents (e.g., declarations, assignments, powers of attorney, IDSs).
• Coordinate with outside patent counsel and foreign associates.
• Experience in reviewing office actions and tracking office actions, responses, renewals, and deadlines using docketing systems.
• Review outgoing filings for accuracy, consistency, and compliance.
• Reporting to stakeholders regarding filings, patent prosecution, etc.
  
  

Intellectual Property Docketing

• Review and upload all copyright, trademark, patent, and patent application documents in the patent management system and take proactive measures to obtain the same from internal and external intellectual property counsel.
• Obtain and process new technology disclosures (NTD) through the SUNY Inventor Portal, which is I&P's electronic tool to accept NTD from researchers.
• Obtain, process, and docket all intellectual property-related supporting documentation including, but not limited to, Information Disclosure Statement documents, Assignments, Powers of Attorney, and Declarations. Assist with internal processes regarding the same, such as requesting Supplemental IDS searches.
• Process, provide, and obtain patent portfolio information with their external annuity/fee management firm including, conveying instructions, and obtaining and reviewing reports.
• Manage assigned email account(s) and prioritize action items for designated case manager.
• Handle the administrative processes for assigned agreements and other matters relating to I&P operations and research, including the processes associated with the assignment and licensing of SUNY intellectual property, in accordance with established procedures.
  
  

Sponsor Compliance

• Assist with preparation and tracking of legal agreements such as: license agreements, options, NDAs etc.
• Track licensed patents and ensure alignment with licensing terms.
• Ensure that all intellectual property is managed pursuant to sponsor or contractual requirements (including federal, state, and industry sponsors), with a particular focus on the requirements outlined in the Bayh-Dole Act and related implementing regulations.
• Utilize electronic tools (i.e., Minuet, iEdison) to ensure all federally supported inventions and related patent applications are disclosed to the government, facilitate the final invention disclosure process, monitor the system for errors and alerts to correct and resolve them, collaborate with colleagues and inventors across the SUNY enterprise to elect title to inventions, and prepare and submit utilization reports.
  
  

Agreement Management Support

• Provide support in the preparation and execution of confidentiality and material transfer agreements and ensure agreement records reflect terms.
• Create, update, and maintain records, data, and other content relating to assigned agreements and matters in databases on a timely basis, file correspondence, and other documentation, and generally ensure that the information included in the databases is as complete and accurate as possible.

Reporting and Other Support

• Produce regular reports demonstrating the achievement of specific key performance indicators for leadership as requested.
• Represent team on internal and external focus groups to enhance knowledge of iEdison, Minuet, and other systems utilized by the team to manage workflow and report activities.
• Work collaboratively with other staff as needed, to ensure the integrity of data and content in the databases, and that all policies and procedures regarding I&P workflow are followed consistently; to streamline processes; and improve form templates and reporting where possible.
• Participate in group meetings as requested.
• Support other duties and initiatives as assigned.
  
  

The ideal candidate will:

• Passion for science and technology and knowledge of the process of transitioning technology from the academic bench to qualified industry partners.
• Excellent verbal and written communication skills and be comfortable communicating with anyone who interacts with SUNY research, innovation, and commercialization; this includes researchers, inventors, teaching faculty, entrepreneurs, business leaders at all levels, administrators, students, and representatives of all levels of local, state and federal government.
• Desire to learn from others constantly, remain determined to achieve goals, and relentlessly support the team while always remembering this is not your typical 9-5 job.
• An agile mindset, a can-do attitude, a bias to action, a desire to "get to yes," and a willingness to tackle any task needed to get the job done with the unwavering support of teammates and leadership.
• Strong project management skills or the capacity to learn them quickly (through training in our specific methodology), to be effective in taking both lead and supporting roles in RF projects.
• A self-starting, detailed-oriented, and professional demeanor with creative problem-solving and decision-making skills.
  
  

Requirements

Requirements:
 

EDUCATION & EXPERIENCE:

• An Associate's degree or higher in an applicable discipline or an equivalent combination of education and experience.
• At least three years of experience in a setting that is focused on delivering high-value services to diverse customers.
• Strong experience in docketing and tracking USPTO and WIPO notifications.
• Comfort with intellectual property, particularly patents, and copyrights.
• Understanding of university research administration, sponsored programs, and technology transfer is preferred.
• Experience with iEdison reporting, Bayh-Dole compliance, federal invention reporting, title election, and utilization reporting is highly desirable.
• Experience as a patent paralegal is strongly preferred.
  
  Please apply directly on the SUNY Research Foundation Website: https://rfsuny.interviewexchange.com/jobofferdetails.jsp;jsessionid=5EAE25E11CC8A95EDB1D00BDA94A0283?JOBID=200358