Licensing Associate II

Portfolio Management
Assist with management of all aspects of the patenting process, including data entry and ongoing maintenance of the Tech Licensing (TL) database and electronic records.
Participate in oral disclosure and follow-up meetings with inventors to assure completeness of disclosure and any assure receipt of related supporting documents. Responsible for tracking publication dates for patent bar deadlines.
Assist outside attorneys in obtaining instructions for prosecution decisions within a timely manner. Maintain reminder system for standard deadlines in prosecution and assure accuracy of patent records in database. Provide final authorization to counsel for any action or non action.
Initiate and maintain communications with inventors and licensees as necessary to support appropriate filing, prosecution and maintenance of filings with the USPTO and foreign patent offices. Expected to draft clear and concise communications relating to patent prosecution and case management. Review all patent, copyright, and trademark related correspondences to ensure accuracy, completeness, and timeliness. Track and regularly monitor each case for impending prosecution deadlines and consult with supervisor to confirm instructions on an action to assure that IP rights are appropriately maintained.
Assist to make sure all agreement records in database including license/options, Confidential Disclosure Agreements, MTAs, and IIAs are accurate and complete.
Assist with the coordination of invention reporting efforts and patent filings with collaborative institutions, labs, and outside industry partners under specific agreements.

Compliance
Learn standard federal reporting obligations required under the Bayh-Dole act and be able to report invention, research materials and patents through iEDISON. The Licensing Associate is responsible for minimizing iEDISON reporting errors and resolving any errors associated with the portfolio and reporting annual utilization through iEDISON. Understand basic differences in reporting requirements of the various agencies using iEDISON.
Responsible for verifying funding information from inventors and must be able to navigate UFIRST and UF Document Imaging for notice of award. Be able to read NOA to determine reporting requirements for Federal and Non-Federal sponsor. Accurately report any obligation and requirements into database record for any funding sources. Ensure the correct federal funding statement language is used with the correct grant numbers. Able to provide basic compliance instructions to inventors, outside counsel and collaborative institutions.

Administrative
Become an expert user of Tech Licensing’s database assuring information pertaining to all technologies, applicable patents and agreements, are timely entered and correct. Assure inventors, attorneys and licensees contact information is up to date during life of case.
Become proficient at querying the database and producing reports needed for portfolio reviews and regular maintenance of the portfolio.
As needed, assist with confidentiality and material transfer agreements. 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 administrative assistant.
Act as a training resource for new/less experienced Licensing Associates and assisting other licensing teams as necessary when that team’s LA is absent for an extended period.
Other duties as assigned.

A bachelor's degree in an appropriate area of specialization and two years of appropriate experience, or an equivalent combination of education and experience.

1. Knowledge of MS Office programs and ability to work with a complex database.
2. Ability to deal with the stakeholders in a courteous and professional manner.
3. Ability to work independently.
4. Excellent written and oral communication skills.
5. Ability to organize and maintain accurate and complete records.
6. Excellent human relations skills, including the ability to function in a team setting.
7. Ability to plan, organize and coordinate work assignments.
8. Ability to understand and apply applicable rules, regulations and policies and procedures.
9. Attention to detail.
10. Ability to track and meet multiple overlapping deadlines.
11. Ability to multitask and prioritize and handle consistently high volume of work.
12. An Associate’s degree and/or experience as a legal assistant.
13. General knowledge of U.S. patent law.