General Information
| Job Description | INTELLECTUAL PROPERTY OFCR 2 | Working Title | Intellectual Property Analyst |
|---|---|---|---|
| Job Code | 006237 | Grade | 23 |
| Department Name | Technology Partnerships - D01278 | Department Head | |
| Supervisor | Effective Date | 06/22/2020 |
Position(s) Directly Supervised
| Job Code | Title | FTE |
|---|
Generic Scope
| Professional who applies acquired job skills, policies, and procedures to complete substantive assignments/projects/tasks of moderate scope and complexity; exercises judgment within defined guidelines and practices to determine appropriate action. |
Custom Scope
| Using intellectual property/technology licensing/transfer concepts, applies organization policies and procedures to resolve a variety of intellectual property/licensing/transfer issues. Works on problems of moderate scope where analysis of situations or data requires a review of a variety of factors. Works under direction of higher-level officer where some interpretation of established work policies and procedures is required, and, at times deviation from standard work practices may be needed. |
Department Custom Scope
| The intellectual property (IP) Analyst will be primarily responsible for assisting with evaluating IP and determining the patentability of institution's inventions. The incumbent will act as a bridge between patent counsel and inventors and licensing officers to translate the nuances and jargon of patent drafting and office action responses to simplistic elements that can be easily understood. Docketing, managing, tracking, and monitoring the UCR IP portfolio activities will be required, as necessary. The IP Analyst is expected to interact with internal and external stakeholders, including others on the Technology Commercialization and Technology Partnerships team, UCR faculty and students, and with external law firms and should have an acute attention to detail, well organized, follow-through to conclusion of actions, with ability to identify errors, offer resolution, and to meet strict deadlines. Being a registered patent agent is required. This position will report to the Director of Technology Commercialization as part of the Office of Technology Partnerships within Research and Economic Development at the University of California, Riverside. |
Education & Experience Requirements
Education Requirements
| Degree | Requirement |
|---|---|
| Bachelor's degree in related area. | Required |
| Advanced degree. | Preferred |
| Juris Doctor (JD) degree. | Preferred |
Experience Requirements
| Experience | Requirement |
|---|
License Requirements
Certification Requirements
| Certification | Requirement |
|---|---|
| Registered Patent Agent | Required |
Educational Condition Requirements
| Condition | Requirement |
|---|
Key Responsibilities
| Description | % Time |
|---|---|
| Under general supervision, researches and collects data on markets and corporations to identify potential licensees that have the highest probability of successfully commercializing a technology or intellectual property. | 5 |
| Under general supervision, advises on basic intellectual property clauses, contracts and agreements in sponsored and collaborative research agreements. | 5 |
| Assists with conducting legal and/or policy analysis and recommends exceptions to policy. | 5 |
Assists with determining patentability of institution's inventions.
|
65 |
| Assists with coordinating with researchers on commercialization strategy. On a regular and recurring basis, meets with researchers and licensing officers to review research direction in order to develop intellectual property strategy and review federal grants and industry contract reports for identification of potentially patentable IP. Communicates with and between researchers and all necessary internal and external parties to accomplish goals. This will be accomplished in coordination with the licensing officer and members from the Entrepreneurial Programs within the Office of Technology Partnerships, as necessary. | 10 |
| Dockets, manages, tracks, monitors UCR patent portfolio activities, including, but not limited to, invention disclosure review and acceptance, patent application filings (U.S. and foreign), office actions, attorney invoicing, maintenance fees and annuities. Provides instruction to external attorneys on patent matters when necessary and as authorized by officers and management. Assists with preparation and completion of patent documents, responses, filings, and forms. Stays up to date on current U.S. and foreign case law, updates in USPTO rules, related UC policy, and other updates to regulations related to IP and patent procedure and educates officers and management as necessary. | 10 |
Knowledge, Skills & Abilities
| Knowledge/Skill/Ability | Requirement |
|---|---|
| Working knowledge of and application of standard principles, theories and concepts such as laws, regulations, and practices pertaining to the protection and management of intellectual property, university technology transfer, and general scientific and/or technical skills in subject matter area. | Required |
| Ability to market technology to industrial partners; knowledge of contracts and grants preferred. | Required |
| Demonstrated familiarity of patent (U.S. and foreign, including PCT) prosecution procedures, timelines, laws and regulations. Working knowledge of required patent documents and forms in the patent prosecution process. | Required |
| Working knowledge of law firm billing practices. Demonstrated ability to carefully review and interpret a variety of legal invoices for legal work from law firms to assess correctness and accuracy for approval. | Required |
| Working knowledge of commercial patent docketing systems. Familiarity of UC patent tracking database or comparably similar. | Required |
| Solid communicator: includes verbal and written communications, active listening, critical thinking, and persuasiveness. | Required |
| Strong interpersonal skills and a customer-service oriented individual who will be responsive to the needs of faculty, students, staff, entrepreneurs, and industry partners. | Required |
| Demonstrated energy, enthusiasm, and willingness to make and utilize new contacts. | Required |
| Precise attention to detail, well organized, follow-through to conclusion of actions, with ability to identify errors, offer resolution, and to meet strict deadlines. | Required |
| Demonstrated record as a team player within a diverse environment. Self-starter with strong work ethic who can work well with others. | Required |
| Self-starter with strong work ethic who can work well with others. | Required |
| Ability to plan, organize, and prioritize assignments and work independently to complete assignments, responding appropriately to competing requirements and changing priorities. | Required |
Special Requirements & Conditions
| Special Condition | Requirement |
|---|
Other Special Requirements & Conditions
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Level of Supervision Received
| Supervision |
Environment
Working Environment
| Campus |
Other Requirements
Items Used
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Physical Requirements
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Mental Requirements
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Environmental Requirements
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Critical Position
| Is Critical Position: No |