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PATENT PORTFOLIO MANAGER
Location : Washington, Seattle
Refer job # DOIM336590

Job Responsibilities and Requirements: 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. Process Improvement: 10% 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: 30% 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: 60% 1. Evaluation of invention disclosures from UW researchers in the areas of chemistry, engineering, life sciences 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, engineering, life sciences. 15. May develop patent drafts with claims of appropriate scope; 16. May prepare voluntary claim amendments, office action responses, and appeal briefs as required for pending patent applications. Requirements include: 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 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 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.



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