Patent Administration Manager

4 weeks ago

Boston, Massachusetts, United States Northeastern University Full time

About the Opportunity

This job description is intended to describe the general nature and level of work being performed by people assigned to this classification. It is not intended to be construed as an exhaustive list of all responsibilities, duties and skills required of personnel so classified .

JOB SUMMARY

The Patent Administration Manager is a member of the Center for Research Innovation (CRI) team.The primary purpose of this role is to effectively protect and manage Northeastern University's intellectual property (IP) assets to create a robust portfolio, develop and implement resources and processes within CRI to ensure appropriate protection of portfolio

Reporting to the Associate Director of Finance and Operations, the Patent Administration Manager will provide leadership within CRI and Northeastern University related to best practices for IP portfolio management, and integrity of portfolio data. Responsibilities will include collaborating with the Commercialization Team, Contracts Team and In-house Counsel to support CRI's contracts and commercialization processes and to ensure that invention disclosures and agreements receive legal and commercial review when necessary, communicating extensively with outside counsel throughout prosecution and decisions related to portfolio, and providing a high level of customer service, education, and expertise to inventors, researchers, and entrepreneurs within Northeastern University through patent prosecution lifecycle.

MINIMUM QUALIFICATIONS

Ability to understand relevant information from outside counsel correspondence and USPTO communications and databases and communicate such information with CRI colleagues and stakeholders, manage and report all activities and upcoming decisions related to portfolio, and identify areas for process improvement and work with CRI colleagues and other stakeholders to implement a work plan to accomplish objectives.

Effective organization skills, strong attention to detail, and effective communication and interpersonal skills. Resourceful, self-motivated, able to manage workload independently and as part of a team, able to manage and accomplish multiple projects and priorities including those of direct report, and able to exercise discretion in areas of responsibility.

Knowledge and skills required for this position are often obtained through a bachelor's degree and experience consisting of a minimum of three years working as a patent paralegal or legal administrative assistant or equivalent within a University environment. Paralegal certification preferred. Must have solid knowledge of USPTO rules and practices and patent application and prosecution process, general knowledge of sponsored research, and competency working with Microsoft Office applications, iEdison, PrivatePAIR, and docketing software such as CPI.

KEY RESPONSIBILITIES & ACCOUNTABILITIES

1) Protect and manage Northeastern University's IP assets (50%):

• Knowledgeable communication with inventors, researchers, entrepreneurs, and external parties to direct and lead IP lifecycle

• Prepare and review intellectual property assignment and declaration documents, as well as other related paperwork; coordinate the execution of these documents by faculty and oversee their recording with patent offices; review Power of Attorney documents, coordinate their execution by the outside counsel, and oversee their filing with patent offices.

• Oversee docketing of IP assets, data integrity, and related reporting to CRI and stakeholders

• Run weekly IP meeting within CRI to address portfolio status and decisions on assets

• Extensive communication with outside counsel throughout prosecution and decisions related to portfolio

2) Develop and implement resources and processes within CRI to ensure appropriate protection of portfolio (20%):

• Provide leadership within CRI and Northeastern University related to best practices for IP portfolio management

• Collaborate with In-House Counsel, Contracts Team, Commercialization Team to support and improve contracts and commercialization processes

3) Strategic projects with CRI leadership (10%):

• Provide expertise on projects that support the mission and goals of CRI and Northeastern University

• Develops and maintains reports for internal audits

• Work with Contracts Team on administration and provide substantive knowledge of agreements affecting and supporting CRI's patent portfolio.

4) Ad-hoc reporting (10%)

• Create comprehensive reports detailing intellectual property activities, including the handling of invention disclosures and patent filings.

• Prepare Intellectual Property Portfolio Analysis of Inventors/Technologies as needed.

5) Other duties as assigned (10%):

Position Type

Research

Additional Information

Northeastern University considers factors such as candidate work experience, education and skills when extending an offer.

Northeastern has a comprehensive benefits package for benefit eligible employees. This includes medical, vision, dental, paid time off, tuition assistance, wellness & life, retirement- as well as commuting & transportation. Visit for more information.

Northeastern University is an equal opportunity employer, seeking to recruit and support a broadly diverse community of faculty and staff. Northeastern values and celebrates diversity in all its forms and strives to foster an inclusive culture built on respect that affirms inter-group relations and builds cohesion.

All qualified applicants are encouraged to apply and will receive consideration for employment without regard to race, religion, color, national origin, age, sex, sexual orientation, disability status, or any other characteristic protected by applicable law.

To learn more about Northeastern University's commitment and support of diversity and inclusion, please see .


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