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Intellectual Property (IP) Manager at Albert Einstein College of Medicine

 

POSITION RESPONSIBILITIES

Einstein’s Office of Biotechnology and Business Development is looking to hire an Intellectual Property (IP) Manager to serve a key role in the Office’s strategic operations.

The main goal for the IP Manager is to increase the strength and marketability of Einstein’s IP assets by managing Einstein’s patent portfolio, liaising with outside IP counsel, and communicating with Einstein inventors regarding invention disclosures for their technologies.  The IP Manager will serve as the primary point of contact for Einstein’s IP portfolio and serve as the main liaison between outside counsel and inventor(s). 

The ideal candidate will have a deep and comprehensive understanding of patent law and prosecution strategy especially around early-stage life science assets, and help develop strong intellectual property positions that support commercialization of Einstein inventions and optimize the use of the intellectual property budget and handle the following:

  • Understand Einstein/Montefiore scientific assets from various scientific disciplines and confidently interact with faculty/researchers/clinicians in order to ascertain the novel invention in order to devise patent prosecution strategy
  • Review new Invention Disclosures and provide assessment regarding patentability
  • Liaise with outside IP counsel and Einstein inventors, assisting to develop strong patent claims on assets
  • Provide feedback regarding IP strategy directly to inventor(s) and engage them through the IP prosecution process
  • Review all patent prosecution matters and discuss direction with licensing staff and inventors in a timely and proactive manner
  • Collaborate with marketing/licensing staff to ensure consistency between IP and licensing strategy
  • Prepare weekly reports of patent prosecution matters and updates
  • Review all filings to ensure government reporting compliance, when needed, and work with administrative staff on these compliance matters (returning rights; iEdison reporting)
  • Diligently review invoices from outside counsel and report any issues
  • Solicit new inventions for intellectual property protection and commercialization and identify high potential IP assets
  • Prepare reports needed for metrics, as needed
  • Draft patent-related management agreements with co-assignee partners (Inter-Institutional Agreements, Revenue Sharing Agreements, Preliminary Patent Management Agreements)
  • Serve as a general business development resource for Einstein, and, as such, the incumbent may be utilized to perform other Office functions including administrative, general support, novel program development, and internal and external Office awareness program and material development, including developing Standard Operating Procedures
  • Prepare materials and reports for the Office’s participation at external events and for internal seminars and represent the Office, as needed

QUALIFICATIONS

  • Masters of Life Science required; PhD, preferred
  • Registered Patent Agent with USPTO and/or IP Law experience required
  • 3+ years’ experience working with intellectual property matters in either a law firm, pharmaceutical, biotechnology, USPTO or academic healthcare sectors
  • Advanced proficiency using MS Excel a must
  • Adeptness for working with IP management databases
  • Excellent attention to detail and time/deadlines
  • Demonstrated documentation skills

 Skills and Competencies

  • Proven ability to communicate (written and verbal) in a clear and concise manner
  • Strong time-management and organizational skills.
  • Ability to effectively multi-task/manage a large portfolio of IP assets with competing priorities
  • Ability to understand and evaluate early-stage science
  • Self-starter with ability to work independently and collaboratively
  • Ability to manage long-term relationships with business partners and faculty-inventors and make strategic connections to facilitate technology transfer opportunities
  • Proficient in MS Office Suite, with advanced skills in MS Excel, and ability to seamlessly use IP Management software
  • Demonstrated success in improving operating efficiencies to solve problems is a plus

Click here for more details or to apply >>