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PATENT PORTFOLIO MANAGER

University of Washington
Seattle, WA Full-time
Posted on February 13, 2020
Req #: 176898
Department: CoMotion®
Job Location: Seattle Campus
Posting Date: 02/12/2020 
Closing Info: Open Until Filled 
Salary: Salary is commensurate with experience and education. 
Shift: First Shift 
Notes: As a UW employee, you will enjoy generous benefits and work/life programs.  For detailed information on Benefits for this position, click here.  

As a UW employee, you have a unique opportunity to change lives on our campuses, in our state and around the world. UW employees offer their boundless energy, creative problem solving skills and dedication to build stronger minds and a healthier world.

UW faculty and staff also enjoy outstanding benefits, professional growth opportunities and unique resources in an environment noted for diversity, intellectual excitement, artistic pursuits and natural beauty. All of which has allowed the UW to be nationally recognized as a “Great College to Work For” for six consecutive years. 

The mission of UW CoMotion is to deliver tools and connections that the UW community needs to accelerate the impact of their innovations. 

CoMotion values collaboration, agility, creativity, inclusivity, and a focus on service to the UW community. Come and contribute to the University’s cutting edge technology and social innovations. CoMotion is committed to creating an environment of inclusiveness where every person feels welcomed and valued. We believe that attracting and retaining a diverse staff is crucial to provide excellent and innovative services to UW researchers.

CoMotion has an outstanding full time opportunity for a Patent Portfolio Manager.

The Patent Portfolio Manager is in charge of the preparation and filing of provisionals, patent searches, and patent maintenance in connection with patents filed on UW technology as a result of the University's research activities. The PPM reports to the Assistant Director Patents and works closely with other staff of CoMotion.

This position has significant responsibility for providing expertise in patent decisions and investment, and for the effectiveness with which resources are allocated, including time and legal expenditures. The position, in collaboration with the Director, Innovation Development, develops strategies for the effective management of CoMotion's investment in patent prosecution which constitutes a significant portion of the department's annual budget.

The Patent Portfolio Manager evaluates inventions and manages the patenting process, including the preparation, drafting, and filing of patent applications based on invention disclosures from UW researchers, faculty and staff (inventors).  These patent filings, as well as issued patents maintained by CoMotion, can have significant impact on the strategic thrusts, business decisions, budget and revenue of CoMotion and the University. Most importantly, this position will need to ensure that CoMotion's and the University's goals and mission are considered and protected in relation to patent decisions and management.

RESPONSIBILITIES:

Process Improvement:

In collaboration with the Director Innovation Development, the position provides expertise in evaluating present practices; develops new initiatives and procedural efficiencies, and will provide guidance on projects that do not warrant further allocation of University resources.

The position assists the Director, Innovation Development in the review and formation of policy and procedures, and in developing strategies for improving the management of intellectual property.

Patentability Review and Decision Making:

The Patent Portfolio Manager exercises independent judgment and discretion in the performance of the position's functions and has delegated authority from the Director, Innovation Development to make necessary commitments that will affect the operations of the department.

Patent Prosecution:

1. Evaluation of invention disclosures from UW researchers in the areas of chemistry, life sciences, engineering or medical devices for patentability;

2. Conduct patent landscape searches and provide an appropriate review;

3. Prepare and file provisional patent applications;

4. Manage outside counsel and patent portfolios;

5. Review relevant third party patents/patent publications;

6. Respond to inquiries from internal and external parties regarding patents and patent expenses;

7. Review patent portfolios (patent mapping) and identify issued patents and pending patent applications that do not provide value and therefore do not require further investments;

8. Educate and advise inventors and CoMotion staff on patent strategy;

9. Build relationships and trust with inventors and CoMotion staff;

10. Assist inventors with invention disclosures, conduct inventor interviews to identify new ideas and other disclosures;

11. In coordination with the Director, Innovation Development, ensure alignment of business strategy, technical direction, and IP strategy;

12. Evaluate the non-Provisional/PCT patent applications prepared, filed and prosecuted by outside counsel

13. Review IP-related agreements and ensure terms are met; and

14. Understand and discuss technologies related to chemistry, life sciences, engineering or medical devices. 

15. May develop patent drafts with claims of appropriate scope;

16. May prepare voluntary claim amendments, office action responses, and appeal briefs as required forpending patent applications.

REQUIREMENTS:

  • Bachelor’s degree or higher in appropriate technical area.

  • Four years’ experience in a law firm or an intellectual property office.

  • Experience as a Patent Agent or Patent Attorney, including experience with prior art searches, assessing patentability, drafting provisional patent applications and responding to office actions.

  • Experience in perfecting intellectual property rights and knowledge of federal and state laws, rules and procedures regarding intellectual property, including patents, copyright, and trade secrets.

  • Must have current USPTO registration number.

    Equivalent education/experience will substitute for all minimum qualifications except when there are legal requirements, such as a license/certification/registration.

    DESIRED:

  • Experience in working collaboratively with researchers and industry.

  • Familiarity with the Bayh-Dole Act and its process requirements for the University of Washington.

  • Knowledge of UW policies and guidelines required in the protection of intellectual property through patents, copyright, trademark, etc.

  • Knowledge of requirements from federal funding agencies, including marking patents, software, and products, and US embargo restrictions.

  • Knowledge of and experience in international IP protection, including PCT filings and conversions.

    CONDITIONS OF EMPLOYMENT:

    Application Process:
    The application process for UW positions may include completion of a variety of online assessments to obtain additional information that will be used in the evaluation process.  These assessments may include Work Authorization, Cover Letter and/or others.  Any assessments that you need to complete will appear on your screen as soon as you select “Apply to this position”. Once you begin an assessment, it must be completed at that time; if you do not complete the assessment you will be prompted to do so the next time you access your “My Jobs” page. If you select to take it later, it will appear on your "My Jobs" page to take when you are ready. Please note that your application will not be reviewed, and you will not be considered for this position until all required assessments have been completed.
  • Committed to attracting and retaining a diverse staff, the University of Washington will honor your experiences, perspectives and unique identity. Together, our community strives to create and maintain working and learning environments that are inclusive, equitable and welcoming.

    The University of Washington is a leader in environmental stewardship & sustainability, and committed to becoming climate neutral.

    The University of Washington is an equal opportunity, affirmative action employer. To request disability accommodation in the application process, contact the Disability Services Office at 206-543-6450 / 206-543-6452 (tty) or dso@uw.edu.