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Associate Director for Intellectual Property, Cornell University

 

ASSOCIATE DIRECTOR FOR INTELLECTUAL PROPERTY – CORNELL UNIVERSITY

Cornell University has retained The Vortechs Group for three searches: Associate Director for Intellectual Property; Intellectual Property Officer; and Technology Licensing and Business Development Officer.

Cornell University is an innovative Ivy League university and a great place to work. Its inclusive community of scholars, students and staff impart an uncommon sense of larger purpose and contribute creative ideas to further the university’s mission of teaching, discovery and engagement. With the main campus located in Ithaca, NY, Cornell’s far-flung global presence includes the medical college’s campuses on the Upper East Side of Manhattan and Doha, Qatar, as well as the Cornell Tech campus located on Roosevelt Island in the heart of New York City.

Associate Director for Intellectual Property

The Associate Director for Intellectual Property (“ADIP”) will be responsible for the strategic management of Cornell’s IP assets to support the Licensing and Business Development functions of CTL. The ADIP will lead a team of 6 people and manage his/her own portfolio in either Life or Physical Sciences.

A full PDF with further details can be found here.

Key Responsibilities:

Leadership responsibilities of the ADIP:

• Oversee outside patent firms and set standards to ensure performance in delivering quality patents.
• Establish effective processes to support the filing and prosecution of patent applications with effective interactions with inventors, Licensing and Business Development Officers, and law firms.
• Establish and monitor process for patent cost control for the overall portfolio.
• Ensure close working relationship with other teams at CTL for compliance, finance and reporting responsibilities.
• Provide supervision and mentorship to staff in the IP group.
• Stay current on all developments in IP law and recommend strategies accordingly.
• Take the lead on providing educational materials and presentations to colleagues at CTL on legal matters and the wider Cornell community. Develop intern programs in concert with Director of Innovations Partnerships.

Responsibilities in managing IP portfolio entail the following areas:

• Manage the filing of patent applications through external IP counsels.
• Assist Licensing and BD Officers and inventors in the review of all new inventions and facilitate filing decisions by making patentability assessments, including prior art searches, and developing prosecution strategies.
• Lead the filing of all new patent and trademark applications and work closely with IP counsels and inventors.
• Help make strategic decisions for foreign filing and conversion with Licensing and BD Officers and licensees.
• Communicate with and educate researchers about the patenting process.
• Manage and optimize patent prosecution through interactions with outside counsel and researchers, maximizing the scope and value of patent claims.
• Lead the timely and strategic management of all patent prosecution matters, including organizing meetings with inventors, Licensing and BD Officers, outside counsel, and licensees as required.
• Communicate with the Licensing and BD team to ensure the claims are aligned with commercial strategy for the intellectual property, and continuously assess and track outside counsel to ensure patent quality.
• Monitor patent expenses of the portfolio and recommend appropriate cost saving actions if applicable.
Serve as the point of contact at CTL for Cornell’s University Counsel for patent enforcement cases when applicable.
• Assemble materials for patent enforcement cases, working with outside attorney and Licensing and BD Officer for the analysis.
• Assist Executive Director and University Counsel in recommendations to university leadership for enforcement strategies.

Intellectual Property Officer

The Intellectual Property Officer (“IP Officer”) will report to the Associate Director for Intellectual Property and develop close relationships with Licensing and Business Development Officers to enable the successful management of a large patent portfolio in Life or Physical Sciences.

A full PDF with further details can be found here.

Key Responsibilities:

• Manage the filing of patent applications through external IP counsels.
• Assist Licensing and BD Officers and inventors in the review of all new inventions and facilitate filing decisions by making patentability assessments, including prior art searches, and developing prosecution strategies.
• Lead the filing of all new patent and trademark applications and work closely with external IP counsels and inventors.
• Help make strategic decisions for foreign filing and conversion with Licensing and BD Officers and licensees.
• Communicate with and educate researchers about the patenting process.
• Manage and optimize patent prosecution through interactions with researchers and outside counsel, maximizing the scope and value of patent claims.
• Lead the timely and strategic management of all patent prosecution matters, including organizing meetings with inventors, Licensing and BD Officers, outside counsel, and licensees as required.
• Communicate with the Licensing and BD team to ensure the claims are aligned with commercial strategy for the intellectual property, and continuously assess and track outside counsel to ensure patent quality.
• Monitor patent expenses of the portfolio and recommend appropriate cost saving actions.
• Serve as the point of contact at CTL for Cornell’s University Counsel for patent enforcement cases when applicable.
• Assemble materials for patent enforcement cases, working with outside attorney and Licensing and BD Officer for the analysis.
• Assist Executive Director and University Counsel in recommendations to university leadership for enforcement strategies.

Technology Licensing and Business Development Officer

The Technology Licensing and Business Development Officer in Physical Sciences and Engineering will be a seasoned professional who will work with the with the Center’s leadership team in a comprehensive technology commercialization and industry partnership program.

A full PDF with further details can be found here.

Key Responsibilities:

Serve as the primary liaison to establish rapport relationship with faculty and research staff in designated research areas, including:

• Help faculty and researchers crystallize inventive ideas and disclose inventions, tangible and copyrightable materials to the University.
• Evaluate technologies in various stages of development for their technical novelty, commercial potential, and IP protection methodology.
• Identify candidates that benefit from research collaborations before commercialization. Develop strategies for commercialization and industry partnership together with faculty and researchers, with feedback from industry advisors and marketing campaigns.
• Explore and assist with potential startup company opportunities for inventors wishing to engage in entrepreneurship activities.
Continuously assess business needs in target industries by establishing and maintaining business development contacts with industry and investment community, including:
• Connect opportunities for commercialization and research collaborations with Cornell’s inventions and/or research programs.
• Actively work with inventors and corporate outreach personnel.
• Market technologies and research programs to advance the development of technologies, to targeted potential licensees and research sponsors/collaborators.
• Follow industry trends and trade shows, engage with senior business development executives, and continuously assess industry needs for which Cornell research can be leveraged.
• Connect technology assets or research programs and make value propositions to synergistic companies, entrepreneurs and investors.
• Collaborate with the innovation partnership group at Cornell for strategic relationships and engagements with industries and investors.
Construct reasonable and fair financial deals for IP licenses, industry sponsored research agreements, and other related commercial agreements, including:
• Negotiate terms and conditions for the IP license agreements with companies or startups to advance the development of products.
• Structure, negotiate, and conclude complex deals, and contribute to the formation of strategies of the Center’s overall licensing and business development objectives.
• Communicate and work closely with the Center’s IP Officers regarding IP filing and patent prosecution strategies to best suit the commercialization plans.
• Be creative in deal-making as well as adhere to academic principles, with the ability to handle complex transactions.

REQUIREMENTS

Associate Director for Intellectual Property

• 4 year degree, JD preferred
• Registered patent agent or patent attorney with an advanced technical degree
• Minimum seven-year experience in managing large IP portfolio at an academic tech transfer office, a commercial entity or in a law firm
• Proven leadership experience in leading, managing, and developing a team
• Up to date, extensive knowledge of intellectual property law, especially patent law and patent prosecution, both US and foreign

Intellectual Property Officer

• 4 year degree, JD preferred
• Registered patent agent or patent attorney with an advanced technical degree.
• Up to date, extensive knowledge of intellectual property law, especially patent law, both US and foreign
• Proven experience, minimum of 3 years, in managing large patent portfolios and outside counsels in an academic technology transfer office, company or law firm.

Technology Licensing and Business Development Officer

• A graduate degree in engineering and physical sciences, MBA preferred
• 3-5 years of industry experience in business development and technology management
• Experience in an academic technology transfer office. (5-10 years preferred)
• Proven ability to interact with a wide range of people in a professional and ethical manner, including faculty, students, business development professionals, and lawyers.
• Prior experience interacting with venture capitalists and angel investors is a plus.
• Excellent communication skills – listening, presenting, and writing – with proven sensitivity and ability to manage confidential information.

Additional Salary Information: 

Associate Director: $120k-140k
Business Development Officer: $90k-$125k
Intellectual Property Officer: $90k-125k

Interested candidates should send their resume to Lisa Rooney at Lisa@vortechsgroup.com