Senior Patent Management

1 month ago

Cincinnati, United States Cincinnati Children's Hospital Medical Center Full time

Remote work eligible from certain states

Manage and implement commercial strategy of intellectual property generated at Cincinnati Children's Hospital Medical Center, including disclosure identification and evaluation, patent strategy, licensing and commercialization.

REPRESENTATIVE RESPONSIBILITIES

* PORTFOLIO MANAGEMENT

Evaluate disclosed technologies for patenting and commercialization potential. Valuation of select technologies. Develop and implement marketing and patenting plans for inventions. Draft and negotiate term sheets, options, licenses and other agreements. Manage all active agreements. Support Sponsored Research Services in reviewing intellectual property language for certain agreements related to your portfolio. Assess the ability to share research tools.

* INTERACT WITH INVESTIGATORS

Regularly meet with investigators in assigned divisions to stay abreast of their research. Work with investigators to educate investigators about the commercialization of research. Determine when research should be protected and marketed or determine when pieces of an investigator's research can be developed into a commercial product. Help the investigator understand the process and the value of technology commercialization. Provide support in all aspects of technology transfer to all CHMC employees. Identify new technologies.

* RESEARCH

Work with our marketing manager to determine if there is a market need for technologies in progress and analyze if the market can support the technology. If a market need exists, assess the size of the market, the value of the technology, existing technologies/products, and identify businesses interested in the technology. Perform prior art searches to assess patentability of inventions disclosed to the office.

* PATENT PORTFOLIO MANAGEMENT

Provide technology and commercial insights. to the Patent Manager who will perform the following tasks- Draft and file documents required by USPTO. Manage all active patents. Identify opportunities to improve portfolio management and establish SOPs as appropriate. Lead in-house patent-related processes to ensure the completion of all necessary requirements during the patent prosecution lifecycle. Serve as the point of contact with external patent counsel regarding office actions, filing documents, billing matters, etc. Collaborate with counsel to optimize the processes between the CTC and the law firms. Provide drafts of patent applications and office action responses to external counsel, along with other necessary filing documents. Attend relevant educational events and share leanings with the CTC and others at CCHMC. Facilitate interactions between CCHMC investigators and external counsel.

* COMPLIANCE

Maintain accurate records in institutional systems to track intellectual property, disclosures, and agreements. Ensure assessments are completed for proper government and funding reporting. Engage with funding agencies as necessary and negotiate for proper revenue sharing.

EDUCATION/EXPERIENCE

Required:

* Bachelor's degree in a related field
* Advanced Degree in a related field
* 5-7 years of work experience in a related job discipline

Preferred:

* Registered to practice before USPTO or patent bar eligible.

Cincinnati Children's is proud to be an Equal Opportunity Employer that values and treasures Diversity, Equity, and Inclusion. We are committed to creating an environment of dignity and respect for all our employees, patients, and families (EEO/AA).

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