PATENT PROSECUTION ANALYST - REMOTE IN CALIFORNIA ONLY
Company: University of California Office of the President
Location: Oakland
Posted on: September 4, 2024
Job Description:
Apply for JobJob ID70535
LocationOakland
Full/Part TimeFull Time
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Job Posting
For UCOP internal applicants, please login to the internal
candidate gateway at: UC OFFICE OF THE PRESIDENTAt the University
of California (UC), your contributions make a difference. A world
leader producing Nobel and Pulitzer Prize recipients with over 150
years of groundbreaking research transforming the world. Choose a
career where you can leverage your knowledge, skills and
aspirations to inspire and support some of the greatest minds in
the world, and those who will follow in their footsteps. Working at
the University of California is being part of a unique institution,
and a vibrant and diverse community. At the University of
California, Office of the President, we propel our mission through
impactful work locally, in government centers and systemwide. We
are passionate people, serving the greater good.The University of
California, one of the largest and most acclaimed institutions of
higher learning in the world, is dedicated to excellence in
teaching, research and public service. The University of California
Office of the President is the headquarters to the 10 campuses, six
academic medical centers and three national laboratories and
enrolls premier students from California, the nation and the world.
DEPARTMENT OVERVIEWPOSITION SUMMARYDepartment OverviewThe
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
SummaryThe 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.ExperienceRequired 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 AbilitiesRequired
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: SPECIAL CONDITIONSThe 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 INFORMATIONHOW TO APPLYPlease be prepared to
attach a cover letter and resume with your application.APPLICATION
REVIEW DATEThe first review date for this job is July 29, 2024. The
position will be open until filled.CONDITIONS OF
EMPLOYMENTBackground Check Process: Successful completion of a
background check is required for this critical position. Smoke Free
Work Environment: The University of California, Office of the
President, is smoke & tobacco-free as of January 1, 2014. As a
condition of employment, you will be required to comply with the
University of California , as may be amended or revised from time
to time. Federal, state, or local public health directives may
impose additional requirements.EEO STATEMENTThe 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:
. For the University of California's Anti-Discrimination Policy,
please visit: .The University of California, Office of the
President, strives to make this job board accessible to any and all
users. If you have comments regarding the accessibility of our
website or need assistance completing the application process,
please contact us at: or email the Human Resource Department at:
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Keywords: University of California Office of the President, Oakland , PATENT PROSECUTION ANALYST - REMOTE IN CALIFORNIA ONLY, Professions , Oakland, California
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