PATENT PROSECUTION ANALYST - REMOTE IN CALIFORNIA ONLY

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UC OFFICE OF THE PRESIDENT

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Department Overview

POSITION SUMMARY

Department Overview

The Innovation Transfer & Entrepreneurship (ITE) office supports UC's technology transfer operations at the campus and systemwide levels. ITE provides information systems, financial management, patent prosecution, and intellectual property management services. ITE creates tools to help connect external parties to UC innovations and support UC inventors, entrepreneurs, and best practices at UC campuses to realize the public benefit of UC research.

Position Summary

The Office of Innovation Transfer and Entrepreneurship (ITE) is responsible for the administration of intellectual property, including implementation of the University of California Policy on Inventions, Patents, and Innovation Transfer, the evaluation of inventions, prosecution of patents, licensing of intellectual property, monitoring of existing licenses, distribution of resulting income, and provision of support to other University units in copyright, trademark, and research funding agreements. ITE operates under an organizational model that combines centralized and decentralized functions. The information systems supporting this model are complex and mission critical. This position uses advanced operational concepts and objectives to resolve complex patent issues. Regularly works on issues where analysis of situations or data requires an in-depth evaluation of variable factors. Exercises judgment in selecting methods, techniques, and evaluation criteria for obtaining results. Primarily deals with programs with broad impact across the technology transfer function program. Develops and oversees the implementation of new programs and processes. Requires knowledge of U.S. patent law, rules, prosecution, and accounting patent-related practices. The position also requires knowledge and skills with specialized software for tracking domestic and foreign patent filing and prosecution knowledge and skills with specialized software.

Key Responsibilities

• 20% Manages highly complex analyses across the technology transfer spectrum of programs, policies, and initiatives and provides in-depth, complex analyses as an expert in patent prosecution, both foreign and domestic.
• 15% Provides direct assistance to the professional staff, campus tech transfer offices, general counsel and outside counsel at a paralegal level in the area of patent prosecution and oversees US domestic patent filing, supervises foreign patent application filings, plant patent filing and plant variety protection. Requires knowledge of U.S. patent law, rules, and prosecution practice and familiarity with US and foreign patent prosecution, filings and processes. Position also requires knowledge and skills with specialized software for domestic and foreign patent filing.
• 20% U.S. Patent Applications, Patent Prosecution, Maintenance Responsible for filing of U.S. patent applications; monitors all possible statutory bars to patent filing; and dockets and follows-up on the Regents' domestic patent portfolio. Communicates with outside patent attorneys as necessary, taking timely action for completion of prosecution tasks. Responsible for the completeness and accuracy of all domestic patent prosecution records and files. Maintains a specialized software and database system for tracking statutory deadlines. Monitors domestic patent prosecution expenses, analyzes these expenses, and develops and recommends cost controls and cost savings. Maintains coordination with IT&E accounting department. Drafts and completes non-routine correspondence related to prosecution matters, including but not limited to search requests, filing authorization, inactivation, notification, etc. Reviews individual cases for eligibility for reduced U.S. Patent Office fees under small entity status. Supervises the preparation of legal documents for execution and executes letters according to the level of authority. Reviews the status of licensed cases and makes recommendations to management as to paying annuities and fees due on patent applications and patents, as needed, consistent with prosecution and maintenance obligations to licensees. Reviews the maintenance status of unlicensed domestic patents, and patents and makes recommendations to management regarding further maintenance or takes action personally. Monitors and is responsible for payment of patent issuance and maintenance fees to the U.S. Patent Office for cases handled in-house, orders and receives patents from U.S. Patent office; maintains an account for urgent patent orders.
• 20% Foreign Patent Applications, Patent Prosecution, Maintenance Responsible for Supervises filing of foreign patent applications; monitors all possible statutory bars to patent filing; and dockets and follows up on the Regents' foreign patent portfolio. Communicates with outside patent attorneys as necessary to ensure that above prosecution tasks are completed in a timely manner. Responsible for completeness and accuracy of foreign patent prosecution records and files including information entered into the database used for tracking statutory deadlines. Monitors foreign patent prosecution expenses, analyzes these expenses to identify any possible discrepancies, appropriately applies case docket numbers and recommends cost controls and cost savings. Coordinates with ITE accounting department to ensure that invoice payments are paid appropriately. Drafts and completes non-routine correspondence related to prosecution matters, including but not limited to foreign filing authorizations, inactivations, notifications, and coordination with licensees or potential licensees. Reviews individual cases to determine eligibility for reduced fees as appropriate based on small entity status under foreign country laws. Oversees preparation of legal documents (e.g., attestations for the countries, powers of attorney, assignment of rights) for execution and, as necessary, directly executes routine letters. Reviews the status of licensed cases and make recommendations to management as to paying annuities and fees due on patent applications and patents, as needed, consistent with prosecution and maintenance obligations to licensees. Reviews the maintenance status of unlicensed foreign patents and make recommendations to management regarding further maintenance or take action personally. Monitors and authorizes payment of patent issuance and maintenance fees to the attorney firm or annuity service for cases managed in-house. Reviews all incoming foreign patent prosecution documentation and correspondence for proper action and routing, ensuring that appropriate people are copied, especially the licensee (or appropriate contact if licensee is a large entity).
• 25% Supervises input of disclosure and patent prosecution records into database, including records of actions taken with respect to UC contractual obligations to the government. Designs high-level database reports requested by professional staff and management. Prepares monthly activity reports including the disclosure and authorization reports. Supervises updating the master database name/address file, responsible for ensuring its integrity and accuracy. Responsible for database calendar with respect to federal obligations, statutory bars, maintenance fees and prosecution actions. Develops and advocates solutions to system issues, including developing and implementing new systems, policies, processes, and programs. Responsible for identifying areas of improvement and developing, implementing, and monitoring appropriate systems and processes within the Division to ensure patent transactions and campus requests are managed efficiently and in a timely manner. Establishes procedures to ensure campuses have the necessary support from the ITE patent prosecution team. Develops and oversees the implementation of processes to maximize efficiency. Oversees two Blank Assistants in carrying out the duties related to U.S. and foreign filings.
  
  

The selected candidate must reside within the state of California or be willing to relocate. This position is eligible for a remote work arrangement within the state of California with the ability to be on-site, as required.

Experience

Required Qualifications

• Minimum 7 years of experience in a university or corporate setting, including extensive experience in U.S & foreign patent filing.
  
  

Preferred Qualifications

• Expert knowledge of the technology commercialization field, including patent prosecution, intellectual property principles, concepts, and terminology, as well as working knowledge of practices relating to marketing new technologies. Knowledge of the technology commercialization process in a university setting or law firm.
  
  

Skills And Abilities

Required Qualifications

• Strong communication and interpersonal skills to communicate with leadership and lead and direct subordinates.
• Extensive analytical / problem-solving skills.
• Advanced knowledge of organization-specific computer applications.
• Thorough knowledge of organization processes, protocols, research, and procedures.
• Comprehensive project management skills.
  
  

Education

• Bachelor's degree in related area and / or equivalent experience / training
  
  

Travel Requirements

0%

Job Title

Project Policy Analyst 4

Job Code

007399

Salary Grade

Grade 23

Payscale:

$108,000 - $125,000

The University of California, Office of the President, is required to provide a reasonable estimate of the compensation range for this role. This range takes into account the wide range of factors that are considered in making compensation decisions including but not limited to experience, skills, knowledge, abilities, education, licensure and certifications, and other business and organizational needs. It is not typical for an individual to be offered a salary at or near the top of the range for a position. Salary offers are determined based on final candidate qualifications and experience. The pay scale is the budgeted salary or hourly range that the University reasonably expects to pay for this position.

Benefits: For information on the comprehensive benefits package offered by the University visit: Benefits of Belonging

SPECIAL CONDITIONS

The selected candidate must reside within the state of California or be willing to relocate. This position is eligible for a remote work arrangement within the state of California with the ability to be on-site, as required.

Additional Information

HOW TO APPLY

Please be prepared to attach a cover letter and resume with your application.

APPLICATION REVIEW DATE

The first review date for this job is July 29, 2024. The position will be open until filled.

CONDITIONS OF EMPLOYMENT

Background Check Process: Successful completion of a background check is required for this critical position. Background check process at UCOP

Smoke Free Work Environment: The University of California, Office of the President, is smoke & tobacco-free as of January 1, 2014. UC Smoke & Tobacco Free Policy

As a condition of employment, you will be required to comply with the University of California Policy on Vaccination Programs, as may be amended or revised from time to time. Federal, state, or local public health directives may impose additional requirements.

EEO STATEMENT

The University of California, Office of the President, is an Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, age or protected veteran status. For the University of California’s Affirmative Action Policy please visit: https://policy.ucop.edu/doc/4010393/PPSM-20. For the University of California’s Anti-Discrimination Policy, please visit: https://policy.ucop.edu/doc/1001004/Anti-Discrimination.

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