Intellectual Property Specialist

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Updated: May 15, 2018
Job ID: 213749
Status: Full-Time
Regular/Temporary: Regular
Location: Bethesda, MD, United States

Join the HJF Team!

This position reports to the Director of Intellectual Property (IP). Performs a range of administrative, database, and Intellectual Property Management support duties for the Technology Transfer and Commercialization section of the Legal Department located at the Corporate Headquarters in Bethesda, Maryland.  Intellectual Property support includes activities related to inventions and discoveries, patents and other forms of protection, and reporting obligations imposed by sponsors, clients and collaborators. Work assignments are complex in nature, requires knowledge of the patent prosecution process and considerable judgment is required in resolving problems.

ESSENTIAL JOB DUTIES:

Technology & Patent Management Support

  • Manage docketing and distribution of all incoming correspondence sent to the “Patent Inbox”
    • Copy or summarize all correspondence into the Intellectual Property Management System (Inteum)
    • Create and assign activities to tech transfer team members with appropriate deadlines
    • Monitor timely completion of activities to ensure the timely resolution within anticipated deadlines; escalate delinquent activities to the appropriate managers immediately
    • Respond timely to correspondence from inventors, sponsors, attorneys, and other service providers
  • Apprise the Director, Intellectual Property and Manager, Intellectual Property of upcoming deadlines concerning intellectual property matters
  • Prepare monthly summary document of upcoming patent deadlines for the Technology Transfer group
  • Maintain electronic and paper intellectual property files
  • Manage general correspondence with patent law firms
  • Process attorney and annuity invoices for payment and prepare or modify purchase orders, as needed, in coordination with the Technology Transfer Operations Manager
  • Assist in the monitoring of budget expenditures, as needed
  • Facilitate execution of required legal documents such as powers of attorney, assignments, declarations, etc.
  • Support the annuity service process which includes scheduling payments, obtaining approvals, updating the annuity data via the provider’s website

Sponsors, Clients and Collaborators Reporting

  • Interact with departments at HJF and other organizations (i.e., public/private companies, colleges/universities, Uniformed Services University of the Health Sciences (USU), Walter Reed Army Institute of Research (WRAIR), Medical Research and Materiel Command (MRMC), Naval Medical Research Center (NMRC), and other government entities) to provide or obtain information and/or resolve reporting obligations
  • Works with the IP team to ensure compliance with Bayh-Dole obligations, including, but not limited to:
    • Report new or update existing invention and patent information to government agencies including the Uniformed Services University of the Health Sciences (USU), National Institutes of Health (NIH) (via iEdison), Department of Defense (DoD), and other collaborating institutions as appropriate
    • Submit annual utilization reports to the appropriate government agencies
    • Ensure data to sponsors is up to date
    • Develop procedures to ensure that HJF Technology Transfer’s reporting obligations are met timely and completely
    • Assist other HJF departments with award reporting and closeout activities
    • Request IP waivers from federal sponsors and prepare IP assignments for collaborating institutions, as necessary
  • Interact with administrative professionals at corporate and non-corporate partners

Database Management

  • Enter technology, including new Invention Disclosures (IDFs), and patent data into the Intellectual Property Management System (Inteum)
  • Generate reports from multiple databases in support of Technology Transfer operations
  • Perform audits of multiple databases (e.g. Inteum, CPi, etc.), as required, to maintain data integrity
  • Upload documents, invoices, correspondence, and reporting data into IP database and internal electronic records

ADDITIONAL DUTIES:

  • Perform IP and legal research, as needed
  • Assists with initiating, organizing, and completing department projects related to Technology Transfer and Commercialization activities
  • Evaluate, recommend and/or prepare new procedures for department, as necessary
  • Provide notary services to the Technology Transfer & Legal Department, as needed
  • Other duties as requested to support the Technology Transfer & Legal Department

Minimum Education/Training Requirements:  Bachelor’s degree and experience with intellectual property law and patent procedures is required.  Patent Paralegal strongly preferred.  Knowledge of technology transfer and some coursework in a science or health related field ideal.

Minimum Experience:  4 to 6 years of experience in a technology transfer or legal office preferred.

Required Knowledge, Skills and Abilities:  The ability to work independently with demonstrated skills in simultaneously handling multiple projects in a timely manner is required. Superior organizational skills and attention to detail are required. Excellent interpersonal, oral and written communication skills, and ability to interact collaboratively and harmoniously with a diverse group of people, including coworkers and non-HJF personnel, are essential. Excellent computer skills, including proficiency with MS Office™ and Adobe Acrobat, are required. Working knowledge of IP databases.

Work Environment:  Office environment.

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 qualifications to be considered as equivalents, in lieu of stated minimums, require the prior approval of the Chief Human Resources Officer.

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