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Director of Intellectual Property Administration
4 weeks ago
Position Focus:
Launched by Yale University in 2022, Yale Ventures seeks to foster and accelerate a vibrant entrepreneurship and innovation ecosystem that increases support, resources, and opportunities for Yale innovators. The mission of Yale Ventures is to help develop innovations that impact the world’s greatest challenges. Yale Ventures is responsible for Yale’s technology transfer office, protecting and licensing the intellectual property developed at Yale, and helping to bring breakthroughs to market as products and services that can make a difference in the world.
Reporting to the Sr. Executive Director of IP and Licensing Services at Yale Ventures, this position oversees and directs the team responsible for administration of compliance and intellectual property-related operational activities for Yale University, which consists of invention disclosure intake, compliance with government and external agency reporting requirements, management of a large and diverse intellectual property portfolio, and agreement compliance and maintenance. The Sr. Director of Intellectual Property Administration supports the university’s technology commercialization efforts by developing and implementing process improvements that scale with increased operational volumes and new database implementation. The ideal candidate possesses a high-level of attention to detail and is able to manage workloads with multiple demands and shifting priorities within a fast-paced environment.
Essential Duties
1. Lead, manage and direct Yale Ventures' Intellectual Property Administration team responsible for: a. New invention disclosure intake and adherence to Yale Patent Policy procedures b. Compliance with federal and non-federal funding obligations including timely reporting via iEdison and other portals as specified within the terms of funding agreements c. Patent/intellectual property protection and portfolio management processes including developing and maintaining relationships with external law firms, coordinating with external patent counsel on filing new applications, monitoring and processing ongoing prosecution and related correspondence, and docket administration of key deadlines and events 1) Management of patent related expenses and relevant invoicing in compliance with annual budget d. License and other agreement compliance and maintenance including general database management and ensuring data integrity/accuracy in Yale Ventures' information management databases 2. Collaborate with leadership to develop and lead the execution of a comprehensive strategy for delivering high quality and efficient business services related to the entire technology transfer process and all other office activities. 3. Develop, maintain and implement updated office policies and procedures to ensure efficient operations and coordination with other activities of the office. 4. Identify and address opportunities for improvements in major administrative processes, including patent administration, government compliance, patent cost management, and other activities. 5. Develop and maintain various custom reports relating to annual metrics/goals, inventions, patents, and government reporting databases. 6. Government Audit – Coordinate with Yale General Counsel to respond to governmental notices of audits by providing pertinent information and documentation. 7. Foundation Audits (HHMI, VA, AHA, JDRF) – Respond to requests for audits by private foundations or charitable organizations by managing the collection of pertinent information and documentation. 8. Due Diligence Requests – Respond to due diligence requests by working with patent attorneys to provide intellectual property reports, official filing documentation, expense reports, and documentation of chain of title of ownership. 9. Elevated Inventorship Matters – Coordinate with outside patent attorney to address inventorship issues and concerns to make inventorship assessment in accordance with 35 USC 101. Working with patent attorneys provide relevant communications and privileged documentation to General Counsel for review and determination. 10. Litigation Matters – Work with Yale General Counsel to provide information and documentation requested in Motion of Discovery requests including relevant correspondence and liaise with Yale General Counsel and outside IP law firm to provide response to any requests. 11. Advise and oversee IP Admin team activities as related to database migration to ensure smooth transition and high degree of data accuracy and integrity. Train new staff on processes and database reporting 12. Perform other duties as required by the position.
Required Education and Experience
Bachelor’s degree and minimum 7 years of relevant and demonstrated experience, or equivalent combination of education and demonstrated experience.
Required Skill/Ability 1:
Demonstrated experience managing a team, preferably in a university technology transfer office or similar environment.
Required Skill/Ability 2:
Strong interpersonal, communication, and leadership skills, with a focus on excellent customer service. Ability to establish & maintain positive relationships, communicate & comprehend instructions effectively to/from a diverse group of stakeholders.
Required Skill/Ability 3:
Self-motivated individual with ability to exercise discretion & confidentiality, and address and resolve any issues. Exceptional organizational skills, with ability to efficiently handle multiple projects, set priorities, and work independently to meet objectives.
Required Skill/Ability 4:
Proven experience working in relational databases and experience transitioning between database systems. Demonstrated experience implementing and working with Salesforce® CRM system preferred.
Required Skill/Ability 5:
Demonstrated experience with gathering, organizing and analyzing data with high level of accuracy and attention to detail.
Preferred Education, Experience and Skills:
Proven experience in intellectual property management, compliance or legal/paralegal documentation.
Drug Screen
No
Health Screening
No
Background Check Requirements
All candidates for employment will be subject to pre-employment background screening for this position, which may include motor vehicle, DOT certification, drug testing and credit checks based on the position description and job requirements. All offers are contingent upon the successful completion of the background check. For additional information on the background check requirements and process visit "Learn about background checks" under the Applicant Support Resources section of Careers on the It's Your Yale website.
COVID-19 Vaccine Requirement
The University maintains policies pertaining to COVID-19. All faculty, staff, students, and trainees are required to comply with these policies, which may be found here:
Posting Disclaimer
The intent of this job description is to provide a representative summary of the essential functions that will be required of the position and should not be construed as a declaration of specific duties and responsibilities of the particular position. Employees will be assigned specific job-related duties through their hiring departments.
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