Director, Intellectual Property

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Updated: April 26, 2018
Job ID: 213656
Status: Full-Time
Regular/Temporary: Regular
Location: Bethesda, MD, United States

Join the HJF Team!

HJF is seeking a Director, Intellectual Property to support the Legal/Technology Transfer department located at Corporate Headquarters in Bethesda, Maryland. The Director, Intellectual Property is responsible for management of the Foundation's technology portfolio via the daily administration of the patent portfolio and supervision of prosecution of patents by outside counsel.  The Director, Intellectual Property monitors the patent budget and regularly evaluates patent counsel performance.  This position ensures that the Foundation complies with its obligations under technology-related agreements and statutes.  The Director, Intellectual Property interacts with and coordinates with other Foundation personnel in his/her role of management of the Foundation’s intellectual property portfolio. 

In this position, the incumbent interacts with inventors, scientists, and outside patent counsel on a daily basis both in person and by telephone. 

KEY RESPONSIBILITIES:

The responsibilities of the Director, Intellectual Property cover a broad range of scientific and legal activities relating to the administration and management of intellectual property.  Such activities include the following:

  • Supervises the Intellectual Property Specialist in the management of HJF’s intellectual property portfolio;
  • Responsible for educating USU and HJF inventors about intellectual property including submission of invention disclosures and advising the inventors throughout the invention disclosure and patenting process;
  • Responsible for technical and legal evaluation of new invention disclosures for scientific merit, patentability, and commercial potential, in coordination with other members of the department;
  • Responsible for advising the Director, Technology Transfer & Commercialization, and the General Counsel concerning patent strategy, and coordinating strategy with outside counsel;
  • Responsible for supervising prosecution of patents by outside counsel or licensees;
  • Responsible for fulfilling HJF’s obligations for patent prosecution under license agreements;
  • Responsible for managing HJF’s patent budget, review and approval of all patent expenses, and management of patent annuity services in conjunction with the Intellectual Property Specialist,  the Technology Transfer Operations Manager, and the Director, Technology Transfer & Commercialization;
  • Responsible for overseeing maintenance of comprehensive electronic and paper patent files and the IP management database for patent management and patent expenses, in conjunction with the Intellectual Property Specialist and the Technology Transfer Operations Manager;
  • Responsible for developing a comprehensive knowledge of the IP database to utilize and update the information  on patent prosecution and  technology management issues as appropriate;
  • Responsible for analyzing expenses and licensing activity as they pertain to technologies and advising HJF senior management on recommendations to initiate, continue, or discontinue patent prosecutions, both foreign and domestic;
  • Works with other members of the technology transfer team, as appropriate, to draft required memos related to patent prosecution recommendations;
  • Works with the Manager, Intellectual Property Compliance to ensure HJF’s compliance with Bayh-Dole regulations for federally funded inventions including reporting to sponsoring agencies through iEdison and other mechanisms;
  • Assists in the development of policies, standard operating procedures, and goals for HJF and the USU-HJF Joint Office of Technology Transfer in the areas of intellectual property management;
  • Works with the Director of the USU-HJF Joint Office of Technology Transfer to determine which inventions need to be presented to the monthly Joint Patent and Technology Review Group meetings; to develop the meeting agenda; and to summarize and act on the outcome of the meetings and discuss the outcome/recommendations with the inventors;
  • Develops strong working relationships with inventors;
  • Provides positive customer service.

Technology Transfer Activities

  • In coordination with the Director, Technology Transfer & Commercialization, contributes  to development, organization, and implementation of innovative strategies for marketing technically complex technologies and inventions;
  • Prepares non-confidential summaries of technical information for marketing purposes.

 

REQUIREMENTS:

Minimum Educational Requirements: Ph.D. in the biomedical sciences or JD with an undergraduate or Master's degree in the biomedical sciences is required. Patent Agent registration is highly desirable.

Minimum Work Experience: Ten or more years of experience in intellectual property management, technology transfer and marketing and licensing of health sciences technologies.

Required Skills, Knowledge: Self-starter with excellent analytical, interpersonal, and oral and written communication skills.  Demonstrated skills in handling complex inter- and intraorganizational issues in a timely manner and managing multiple projects simultaneously.  Ability to manage a large portfolio of technologies with diverse subject matter.  Ability to present material in a concise and professional manner to a wide variety of individuals and groups, including faculty, staff, attorneys, and business people.    Detailed knowledge of patent law and practice in the US and some knowledge of foreign patent practice are essential.  Knowledge of technology transfer, licensing, and business principles.  Previous supervisory experience with the ability to interact creatively and harmoniously with coworkers, inventors, and outside business professionals.  Team player.  A high degree of computer proficiency with knowledge of intellectual property management systems.

HJF is an equal opportunity and 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, or protected veteran status.

Any alternate qualifications, to be considered as equivalents in lieu of stated minimums, require the prior approval of the Director of Human Resources.

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