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SUNY Research Foundation: Intellectual Property Assistant and Compliance Coordinator

 

About The Research Foundation for SUNY:

The Research Foundation for The State University of New York (RF) is the largest comprehensive university-connected research foundation in the country.

Our mission is to provide talent, services, and technology that empower SUNY to research, innovate, and transfer discoveries that transform the world’s knowledge economy.

Our vision is to make SUNY the best place for faculty, students, and staff to research, innovate and solve the world’s most pressing problems.

The RF serves SUNY by providing essential administrative services that enable faculty to focus their efforts on educating students and performing life-changing research across a wide range of disciplines including Artificial Intelligence, Clean Energy, Biotechnology, Longevity, Substance Addiction, Nextgen Quantum Computing, Environmental Health, and Resiliency. We work with the academic and business leadership of SUNY campuses to facilitate research and discovery by administering sponsored projects and delivering intellectual property and technology transfer services that fuel innovation and move ideas and inventions to the marketplace. 

The RF is committed to diversity, inclusion, and a working environment that enhances productivity creates personal and professional opportunities, unleashes everyone’s full potential, and fuels innovation. We hold the organization and each other to the highest standards of integrity, accountability, and ethical behavior.

Visit www.rfsuny.org and connect with us on Facebook, Twitter, and LinkedIn. Learn about SUNY at www.suny.edu.

Job Description:

FUNCTION & SCOPE:

The Research Foundation for The State University of New York (RFSUNY) seeks an Intellectual Property Assistant and Compliance Coordinator to support the Industry and External Affairs (I&EA) team deliver technology transfer and commercialization support services to SUNY faculty, staff, students, and external partners.  This position will report to the Patent Paralegal and will work directly with technology evaluation, intellectual property, and business development professionals, entrepreneurs, and inventors across the SUNY enterprise to move technology to market.  This position is primarily responsible for the management and maintenance of an intellectual property portfolio.

You will proactively partner with professionals and inventors from across SUNY to develop and implement processes and procedures to ensure diligent stewardship of SUNY’s intellectual property portfolio. You will guide the team in setting priorities to ensure no intellectual property prosecution deadlines are missed. You have an overwhelming sense of pride in your work and you will provide superior customer service when interacting with research teams and inventors, administrators, and governmental and non-governmental partners to ensure all compliance issues are timely addressed.

Through direct, daily interaction with technology commercialization professionals across the enterprise, faculty, small and large businesses, and venture investors, we build strong relationships and enter into agreements to translate academic discoveries into commercial products that benefit society, impact public health, and improve quality of life. If you are an individual who pays close attention to detail and someone who is self-motivated, service-oriented, curious, enthusiastic about technology, outgoing, well organized, decisive, enjoys teamwork, continually being challenged, and engages deeply with inventors, then this is a great opportunity for you.

DUTIES:

Intellectual Property Docketing

  • Review and upload all copyright, trademark, patent, and patent application documents in the patent management system and take proactive measures to obtain the same from internal and external intellectual property counsel.
  • Obtain and process new technology disclosures (NTD) through the SUNY Inventor Portal, which is I&EA’s electronic tool to accept NTD from researchers.
  • Obtain, process, and docket all intellectual property-related supporting documentation including, but not limited to, Information Disclosure Statement documents, Assignments, Powers of Attorney, and Declarations. Assist with internal processes regarding the same, such as requesting Supplemental IDS searches.
  • Process, provide, and obtain patent portfolio information with their external annuity/fee management firm including, conveying instructions, and obtaining and reviewing reports.
  • Manages patents@rfsuny.org email account and prioritizes action items for designated case manager.
  • Handle the administrative processes for assigned agreements and other matters relating to I&EA operations and research, including the processes associated with the assignment and licensing of SUNY intellectual property, in accordance with established procedures.

Sponsor Compliance

  • Ensure that all intellectual property is managed pursuant to sponsor or contractual requirements (including federal, state, and industry sponsors), with a particular focus on the requirements outlined in the Bayh-Dole Act.
  • Utilize electronic tools (i.e., Minuet, iEdison) to ensure all federally supported inventions and related patent applications are disclosed to the government, facilitate the final invention disclosure process, monitor the system for errors and alerts to correct and resolve them, collaborate with colleagues and inventors across the SUNY enterprise to elect title to inventions, and prepare and submit utilization reports.

Agreement Management

  • Manages commercialization@rfsuny.org inbox and records and prioritizes action items for designated case managers. This includes collaborating with the Agreement and Royalty Administrator to ensure counterparties are compliant with contractual obligations.
  • Supports the team in the preparation and execution of confidentiality and material transfer agreements and ensures agreement records reflect terms.
  • Create, update, and maintain records, data, and other content relating to assigned agreements and matters in databases on a timely basis, file correspondence, and other documentation, and generally ensure that the information included in the databases is as complete and accurate as possible.

Reporting and Other Support

  • Produce regular reports demonstrating the achievement of specific key performance indicators for leadership as requested.
  • Represent team on internal and external focus groups to enhance knowledge of iEdison, Minuet, and other systems utilized by the team to manage workflow and report activities.
  • Work collaboratively with other staff as needed to ensure the integrity of data and content in the databases and that all policies and procedures regarding I&EA workflow are followed consistently; to streamline processes; and improve form templates and reporting where possible. Participate in group meetings as requested.
  • Support other duties and initiatives as assigned.

The ideal candidate will:

  • Have a passion for science and technology and knowledge of the process of transitioning technology from the academic bench to qualified industry partners;
  • Have excellent verbal and written communication skills and be comfortable communicating with anyone who interacts with SUNY research, innovation, and commercialization; this includes researchers, inventors, teaching faculty, entrepreneurs, business leaders at all levels, administrators, students, and representatives of all levels of local, state and federal government;
  • Have an agile mindset, a can-do attitude, a bias to action, a desire to “get to yes,” and a willingness to tackle any task needed to get the job done with the unwavering support of teammates and leadership;
  • Have strong project management skills or the capacity to learn them quickly (we will train you on our specific methodology) to be effective in taking both lead and supporting roles in RF projects; and
  • Be a self-starting, detailed-oriented professional with creative problem-solving and decision-making skills.

Requirements:

EDUCATION & EXPERIENCE

  • An Associate’s degree or higher in an applicable discipline or combination of degree and experience.
  • At least three years of experience in a setting that is focused on delivering high-value services to diverse customers.
  • Comfort with intellectual property, particularly patents, and copyrights.
  • Understanding of university research administration, sponsored programs, and technology transfer is preferred.
  • Experience as a patent paralegal is strongly preferred.

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