Contracts and Intellectual Property Docketing Officer
Required Qualifications: (as evidenced by an attached resume)
Juris doctor degree and basic experience editing, negotiating and administering agreements (e.g., material transfer agreements, non-disclosure agreements, license agreements, facilities-use agreements, permits and leases). In lieu of a JD degree, a Bachelor's Degree and two (2) years of full-time experience reviewing, editing, negotiating and administering contracts (e.g., material transfer agreements, non-disclosure agreements, license agreements, facilities-use agreements, permits and leases) may be considered. Knowledge of government, university or industry contracts, or the regulations governing such contracts. High proficiency with Microsoft Office, Google Apps.
Three or more years of full-time experience involving reviewing, editing, negotiation and administration of contracts. Experience in negotiating the terms and conditions of government or New York State contracts, as well as administration thereof. Experience negotiating and/or editing industry-academic contracts or private-government contracts. Paralegal Certificate or Juris Doctorate. Experience in intellectual property (IP) docketing or administration. Two (2) years of full-time legal docketing experience. Experience with portfolio/docket management software (e.g., Minuet, Computer Packages Inc (CPi). Knowledge of government and/or university invention reporting (e.g., NIST/iEdison). Experience with university or government technology transfer.
The Contracts and Intellectual Property Docketing Assistant (C&DA) will report to the Executive Director of Operations for Economic Development (Exec. Director) and work with Stony Brook University's (University) Intellectual Property Partners (IPP) and Economic Development Office (Econ. Dev.). Therefore, the C&DA will work in a team setting and have strong communication skills (verbal and written). The C&DA will have a two-part role including 1) assisting IPP in maintaining and processing IPP's intellectual property (IP) assets; and 2) assisting Econ. Dev.'s Contracts and Risk Management team in processing and tracking Econ. Dev. agreements (e.g., Material Transfer Agreements, Non-Disclosure Agreements, Facilities-Use Permits, and Commercial Agreements). This role will also engage with outside counsel, University and Research Foundation counsel, University faculty and staff, as well as Economic Development/IPP staff and leadership in a team setting to participate and assist in mission specific projects.
Assist in maintaining and processing IPP's intellectual property assets as follows:
1. Intellectual Property Docketing:
- Review and upload all IPP-related, copyright, trademark, patent and patent application documents in IPP's patent management system. The C&DA will be expected to update and file records electronically, request and obtain IP-related documents and execution of the same.
- Obtain and process new technology disclosures (NTD) through IPP's electronic inventor's portal and patent management system.
- Obtain, process, and docket all IP-related supporting documentation including, but not limited to, Information Disclosure Statement (IDS) documents, Assignments, Powers of Attorney, and Declarations.
- Carrying out internal IPP processes, such as requesting Supplemental IDS searches, case manager's reporting, and issued patent announcements.
- Process IPP's patent portfolio information with their external annuity/fee management firm including, conveying instructions, and obtaining and reviewing reports.
2. Federal Compliance:
- Carry out government sponsored IP reporting and compliance-related tasks for all federal sponsors through NIST and iEdison. For example, the disclosure of federally funded inventions to the government sponsor, patent application and final invention reporting, utilization reporting, and elections to retain title through use of the appropriate government database(s). This also will include processing government foreign filing licenses related to IPP inventions and patent applications, and updating the appropriate government database accordingly.
- Sponsor Compliance: Carry out non-profit and industry sponsored invention and intellectual property reporting and related compliance tasks for all non-government funded inventions and intellectual property. For example, identification of sponsor invention reporting requirements in sponsor agreements, timely reporting inventions to industry and non-profit sponsors, coordination of all follow-up inquiries from said sponsors, timely submission of final invention reports to said sponsors as may be necessary.
- Liaison: Interacts via phone, email and in-person meetings with investigators, outside counsel, University and Research Foundation administration on all facets of IPP's intellectual property administration and docketing, with particular emphasis on NTDs, patent application and patent assignments, powers of attorney, inventor declarations, as well as patent and patent application documents.
3. Assist Econ Dev.'s Contracts and Risk Management team in processing and tracking Econ. Dev.'s contracts in accordance with applicable Research Foundation, SUNY and University policies and procedures:
- Non-Disclosure Agreements (NDAs) and Material Transfer Agreements (MTAs): Draft, review, negotiate, execute and/or administer, for example, incoming and outgoing NDAs, incoming and outgoing MTAs, data use agreements (DUAs), and amendments for the same. Further, the C&DA will assist in the development and implementation of internal contracting policies and procedures.
- Facilities-Use Permits: Draft, review and/or administer, for example, facilities-use permits, commercial leases, and amendments for the same.
- Commercial IP Agreements: Draft, review, negotiate, execute and/or administer IP-related agreements for and on-behalf of The Research Foundation for SUNY, for example, license agreements, option agreements, assignments, sponsored research agreements, collaboration agreements, clinical trial agreements, testing-agreements and amendments for the same.
- Agreement Tracking: Enter applicable contract negotiations, terms and correspondence into electronic tracking and management systems. Monitors and maintains the processing and flow of agreements in the negotiation process and generates reports regarding the same. Specifically, the C&DA will develop and update established processes and documents to ensure metrics and tracking, compliance, document harmonization, and timely execution of contracts.
- Liaison: Work directly with faculty and staff, as well as general counsel and university administration to process and negotiate agreements ensuring that contract terms and documentation adhere to institutional policy and practice. In addition, the C&DA will work with Econ Dev.'s Contracts and Risk Management team to be a liaison between industry and academic administrative offices such as Economic Development, the Office of The Vice President for Research (OVPR), the School of Medicine, faculty and incubator companies/permit holders.
Departmental Project and Process Support: Continuously refine and improve operations related to the role, including business workflows, standard operating procedures, and information system practices related to docketing and contracts for Economic Development & IPP.
Other Duties: Support Executive Director, Econ Dev.'s Contracts and Risk Management team and IPP's mission(s) by carrying out other related duties as assigned and as appropriate to grade/rank.
The Research Foundation of SUNY is a private educational corporation. Employment is subject to the Research Foundation policies and procedures, sponsor guidelines and the availability of funding. FLSA Exempt position, not eligible for the overtime provisions of the FLSA. Minimum salary threshold must be met to maintain FLSA exemption.
Due to U.S. Export Control laws and regulations, the candidate hired will need to be a U.S. citizen, lawful permanent resident, or other "protected individual" (as defined by 8 U.S.C. Sec. 1324b(a)(3).
NOTE: Telework eligibility will be discussed during the interview process.
Resume/CV and cover letter should be included with the online application.
Stony Brook University is committed to excellence in diversity and the creation of an inclusive learning, and working environment. All qualified applicants will receive consideration for employment without regard to race, color, national origin, religion, sex, pregnancy, familial status, sexual orientation, gender identity or expression, age, disability, genetic information, veteran status and all other protected classes under federal or state laws.
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The starting salary range (or hiring range) to be offered for this position is noted below, it represents SBU's good faith and reasonable estimate of the range of possible compensation at the time of posting.
To apply, visit https://stonybrooku.taleo.net/careersection/2/jobdetail.ftl?job=2304171&tz=GMT%2B00%3A00&tzname=UTC
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