Intellectual Property Assistant and Compliance Coordinator
Job description
FUNCTION & SCOPE:
The Research Foundation for The State University of New York (RFSUNY) seeks an Intellectual Property Assistant and Compliance Coordinator to support the Industry and External Affairs (I&EA) team deliver technology transfer and commercialization support services to SUNY faculty, staff, students, and external partners. This position will report to the Patent Paralegal 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 an individual who pays close attention to detail and someone who is self-motivated, service-oriented, curious, enthusiastic about technology, outgoing, well organized, decisive, enjoys teamwork, continually being challenged, and engages deeply with inventors, then this is a great opportunity for you.
DUTIES:
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&EA'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.
- Manages patents@rfsuny.org email account and prioritizes action items for designated case manager.
- Handle the administrative processes for assigned agreements and other matters relating to I&EA operations and research, including the processes associated with the assignment and licensing of SUNY intellectual property, in accordance with established procedures.
Sponsor Compliance
- 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.
- 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
- Manages commercialization@rfsuny.org inbox and records and prioritizes action items for designated case managers. This includes collaborating with the Agreement and Royalty Administrator to ensure counterparties are compliant with contractual obligations.
- Supports the team in the preparation and execution of confidentiality and material transfer agreements and ensures 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&EA 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:
- Have a passion for science and technology and knowledge of the process of transitioning technology from the academic bench to qualified industry partners;
- Have 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;
- Have 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;
- Have strong project management skills or the capacity to learn them quickly (we will train you on our specific methodology) to be effective in taking both lead and supporting roles in RF projects; and
- Be a self-starting, detailed-oriented professional with creative problem-solving and decision-making skills.
Requirements:
EDUCATION & EXPERIENCE
- An Associate's degree or higher in an applicable discipline or combination of degree and experience.
- At least three years of experience in a setting that is focused on delivering high-value services to diverse customers.
- Comfort with intellectual property, particularly patents, and copyrights.
- Understanding of university research administration, sponsored programs, and technology transfer is preferred.
- Experience as a patent paralegal is strongly preferred.
Additional Information:
As an Equal Opportunity / Affirmative Action Employer, The Research Foundation for SUNY will not discriminate in its employment practices due to an applicant's race, color, creed, religion, sex, pregnancy-related conditions, reproductive health decisions, childbirth or related medical conditions, sexual orientation, gender identity or expression, transgender status, age, national origin or ancestry, marital status, familial status, citizenship, physical and mental disability, prior arrest or conviction record, genetic characteristics/genetic information, predisposition or carrier status, domestic violence victim status, military status or service, veteran status, or any other characteristics protected under federal, state or local law. The Company will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.
The Company will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.
Review of applications will begin immediately and continue until the position is filled.
The Research Foundation for the State University of New York is not an agency or instrumentality of the State of New York. Employees of the Research Foundation for the State University of New York are not state employees, do not participate in any state retirement system, and do not receive state fringe benefits. The Research Foundation for the State University of New York operates under a contract with The State University of New York and receives no directly appropriated state funding.
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