Note: Not all unique aspects of the job are covered by this job description
The Office of Technology Licensing at Stanford University seeks an Intellectual Property Specialist. This position should, with limited supervision, collaborate with inventors, companies, patent attorneys, Stanford's Office of General Counsel (OGC) and Technology Licensing Associates (TLAs) to support the protection and commercialization of Stanford's intellectual property, including patents, trademarks, copyrights and all other forms of IP.
*this position is for one year fixed term.
The Office of Technology Licensing (OTL) was established in 1970 to manage the intellectual property assets of Stanford University. OTL evaluates, markets, and licenses technology owned by the University. OTL's mission is to encourage effective technology transfer for the public benefit as well as generating royalty income for Stanford to benefit research and education. OTL is one of the country's most active offices in the field of technology transfer from the university to industry. Our staff, most of whom are professionals engaged directly in licensing, manages over 3,000 active dockets. OTL will move from Palo Alto to the new Stanford Redwood City campus in July 2019. The new Stanford Redwood City campus brings together 2,700 staff in a collaborative environment that reflects Stanford's culture and mission. The campus will offer amenities such as onsite cafes and a dining pavilion, a high-end fitness facility with an outdoor pool, and a childcare center for Stanford families.
Provide status updates and advise others on the patenting process. Track patenting progress, deadlines and key decision points, and provide regular consolidated information to each TLAs, along with recommendations for next steps.
Correspond with inventors and licensees as needed in support of outside counsel; schedule meetings with TLA(s), inventors, external parties, and other internal staff to coordinate and develop strategies and obtain input on key decisions, and instruct outside counsel accordingly.
Work with outside law firms to initiate patent-related work, and monitor patent filings, prosecution and associated timelines. Provide guidance to outside counsel on Stanford's operating approach and help coordinate inventor and licensee interactions as necessary.
Establish and maintain electronic records for patents, copyright, trademark and other content. Query database and produce reports as needed.
Serve as an OTL specialist in managing and educating about particular forms of IP, i.e. patents, trademarks, copyrights in software or content, including copyright assignments. Provide guidance on open source and interface with the Stanford Digital Repository.
Advise TLAs on attorney choice and coordinate engagement process with OGC and new outside counsel. Review and approve attorney bills for accuracy, including reimbursements from licensees. Develop and track metrics on attorney firms.
Coordinate with licensing associates and licensees, as applicable, to negotiate resolution in the event of billing disputes. Coordinate with TLAs, licensees and outside counsel to ensure timely decisions and payments for patent annuities.
Contribute to the development and implementation of process improvements. Proactively follow and enhance Standard Operating Procedures for the IP Management Group and collaborate with other OTL groups as needed to meet OTL's goals. * - Other duties may also be assigned
MINIMUM REQUIREMENTS: Education & Experience:
Bachelor's degree and at least one year of experience working with in-house or outside patent counsel to manage the patenting process, or multiple years of relevant experience, or an equivalent combination of education and relevant work experience.
Knowledge, Skills and Abilities:
Excellent oral and written communication skills.
Strong attention to detail, with the ability to understand the big picture and longer term goals. Excellent judgment to know when to elevate unusual cases to more experienced colleagues.
Proven ability to manage a high volume workload and a multitude of constantly changing priorities in a fast-paced environment.
Demonstrated ability to take initiative, prioritize workload, follow up with diverse stakeholders, meet deadlines, and work productively both on an independent basis and as a collaborative member of a team.
Demonstrated ability to use complex databases, word processing and spreadsheet software
Demonstrated ability to use complex databases, patent docketing software, USPTO's PAIR system (including filing), word processing and spreadsheet software
Certifications and Licenses:
Frequently perform desk based computer tasks, seated work and use light/ fine grasping.
Occasionally stand, walk, use a telephone, lift, carry, push, and pull objects that weigh up to 10 pounds.
Rarely writes by hand.
* - Consistent with its obligations under the law, the University will provide reasonable accommodation to any employee with a disability who requires accommodation to perform the essential functions of the job.
Interpersonal Skills: Demonstrates the ability to work well with Stanford colleagues and clients and with external organizations.
Promote Culture of Safety: Demonstrates commitment to personal responsibility and value for safety; communicates safety concerns; uses and promotes safe behaviors based on training and lessons learned.
Subject to and expected to comply with all applicable University policies and procedures, including but not limited to the personnel policies and other policies found in the University's Administrative Guide, https://adminguide.stanford.edu.
Location: Dean of Research, Stanford, California, United States Schedule: Classification Level:
Stanford is an equal opportunity employer and all qualified applicants will receive consideration without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, veteran status, or any other characteristic protected by law.
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Located between San Francisco and San Jose in the heart of Silicon Valley, Stanford University is recognized as one of the world's leading research and teaching institutions. Leland and Jane Stanford founded the University to "promote the public welfare by exercising an influence on behalf of humanity and civilization." Stanford opened its doors in 1891, and more than a century later, it remains dedicated to finding solutions to the great challenges of the day and to preparing students for leadership in a complex world. The University's thriving diverse community is comprised of nearly 7000 undergraduate students, 12000 graduate students, 2000 faculty members, 1900 postdoctoral scholars, and over 11,000 academic and administrative staff in seven schools including several interdisciplinary research centers and institutes. The campus spreads over 8000 contiguous acres and nearly all undergraduates live on campus. Stanford offers bachelor's and master's degrees in addition to doctoral degrees (PhD, MD, DMA and JD) plus a number of professional and continuing education programs and certifications. More at http://facts.stanford.edu and http://www.stanford.edu. Stanford is an equal empl...oyment 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, protected veteran status, or any other characteristic protected by law. Stanford also welcomes applications from others who would bring additional dimensions to the University’s research, teaching and clinical missions.