Under the direction of an Assistant Director of the Office of Technology Licensing (OTL), the Licensing Associate I will provide support for all aspects of managing the protection and licensing of new technologies. Essential functions of this position include:
- Assist with management of all aspects of the patenting process, including data entry and ongoing maintenance and utilization of the OTL database and electronic filing.
- Provide ongoing support to supervising Assistant Director on new invention disclosures. Assist faculty with completing and submitting new invention disclosures. Participate in oral disclosure meetings with inventors to assure all grant and funding information is recorded correctly and ensure inventor information is accurate and complete. Follow-up with inventors regarding grants received to determine if any new inventions may have resulted from that funding. Work closely with Assistant Director and Marketing team to assist with steps needed to market and license out technologies.
- Assist outside attorneys in obtaining assignments. Coordinate and process correspondence with faculty, attorneys, and the Vice President for Research, to comply with applicable regulations and policies governing intellectual property related matters. Assist with identifying and resolving any issues relating to co-ownership of inventions with other institutions.
- Initiate and manage all communications and information exchanges between faculty inventors, outside patent attorneys and licensees as necessary to support governance of intellectual property rights with the USPTO and foreign offices. Review all patent, copyright, and trademark related correspondences to ensure accuracy, completeness, and timeliness. Track and regularly monitor each case for impending statutory bars and deadlines, and take appropriate action to assure that IP rights are appropriately maintained.
Maintain accurate files for U.S. and foreign patent applications as well as general correspondence/marketing information for all active cases. Monitor patent prosecution process keeping supervisor (Assistant Director) updated on the progress of the applications and upcoming deadlines. Meet regularly with supervisor to discuss patent cases needing decisions such as continued prosecution. General knowledge of the basic principles and operation of U.S. patent law is required as well as UF’s IP policy.
- Understand history and IP protection strategy for individual cases. Provide independent, ongoing liaison with inventors, patent attorneys, companies and institutions. Draft communications relating to patent prosecution. Review and monitor payment of legal costs associated with each case being managed.
- Learn and implement all federal reporting obligations as required under the Bayh-Dole act; the Licensing Associate is responsible for working with various federal agencies to assure the OTL office is in compliance with the Code of Federal Regulations..
- Responsible for obtaining funding information from inventors and communicating with the funding agency and/or industrial sponsor, following receipt of new IP stemming from this funding. Coordinate, prepare and process correspondence to faculty, attorneys and the Vice President for Research, in order to comply with regulations, policies, and statues regarding IP matters.
- For each new disclosure with Export Control restrictions, coordinate with the inventor to confirm and resolve reporting issues related to technologies designated as having an Export Control restriction.
- Work closely with the Assistant Director in preparation of draft agreements and help track various drafts through to final executed version. Manage the Office of Technology Licensing’s database making sure all data is accurate for contracts managed by the licensing team. Work closely with the Director and Assistant Directors to make sure the intellectual property portfolio of all license agreements is correct at all times. Work closely with the licensee to ensure accuracy of licensee contact information.
- Organize and maintain finalized license agreements. Ensure filing of correspondence and reports received from licensees in the electronic database for easy retrieval.
As needed, assist with confidentiality agreements for the research community to ensure protection of the University’s IP rights. On a daily basis, be aware of and safeguard dissemination of confidential information. (This information has a specific exemption under Florida’s Public Records Law)
Help develop, revise and implement Standard Operating Procedures to assist with office efficiency, consistent implementation of procedures and policies and to help train new employees.
Assign, delegate, and review work prepared by the team secretary.
- There will be daily contact with county, state, national and international businesses and daily contact with all levels of faculty, Vice Presidents, Deans, Directors, the General Counsel and other university administrators. There will also be daily contact with outside law firms, attorneys, and periodic contact with federal and state agencies and officials and foundation representatives.
- Other duties as assigned.