Req #: 238261

Department: COMOTION

Appointing Department Web Address: https://comotion.uw.edu/

Posting Date: 09/04/2024

Closing Info: Open Until Filled

Salary: $8,300 - $9,585 per month

Shift: First Shift

Notes: As a UW employee, you will enjoy generous benefits and work/life programs. For a complete description of our benefits for this position, please visit our website, click here. (https://hr.uw.edu/benefits/wp-content/uploads/sites/3/2018/02/benefits-professional-staff-librarians-academic-staff-20230701_a11y.pdf ) Although open until filled, priority will be given to applicants that apply by 9/18.

As a UW employee, you have a unique opportunity to change lives on our campuses, in our state and around the world. UW employees offer their boundless energy, creative problem-solving skills, and dedication to build stronger minds and a healthier world.

UW faculty and staff also enjoy outstanding benefits, professional growth opportunities and unique resources in an environment noted for diversity, intellectual excitement, artistic pursuits, and natural beauty.

The Department of CoMotion has an outstanding opportunity for a Patent Portfolio Manager to join their team.

The mission of UW CoMotion is to partner with the UW community on their innovation journey, providing tools, connections, and acumen to transform ideas into economic and societal impact. The CoMotion Innovation Development group provides innovators with expert advice on the process to launch ideas into the marketplace, oversees intellectual property protection of UW innovations, and guides access to needed resources.

The Patent Portfolio Manager (PPM) in the Innovation Development unit supports the Associate Director, Patents, in the management of the unit's operations. The PPM works to build and implement programs to meet the goals of the unit and fulfill the vision of CoMotion.

The Patent Portfolio Manager is in charge of the preparation and filing of provisional patent applications, patent landscape searches, and management of outside counsel through the filing of non-provisional patent applications, patent prosecution, and patent maintenance in connection with patents filed on UW technology as a result of the University's research activities. The PPM reports to the Associate Director, Patents, in the Innovation Development unit and works closely with other staff of CoMotion.

This position has significant responsibility for providing expertise in patent strategy decisions and investment, communicating effectively with researchers and CoMotion staff, and for the effectiveness with which resources are allocated, including time and legal expenditures. The position, in collaboration with the Associate Director, Patents, develops strategies for the effective management of CoMotion's investment in patent prosecution, which constitutes a significant portion of the department's annual budget.

CoMotion receives IP assets through disclosure from members of the UW community and has stewardship of the asset until it is abandoned or lapses, or until title or control is transferred to a third party. It has responsibility for transferring to third parties title or control of IP assets which are not under active marketing or contract management; for waiving rights back to the federal government for IP assets developed in part with federal funding; and for coordinating management of IP assets in which UW is a joint owner.

The Patent Portfolio Manager evaluates inventions for patent protection and manages the patenting process through outside counsel, including the preparation, drafting, and filing of patent applications based on invention disclosures from UW researchers, faculty, and staff (inventors). These patent filings, as well as issued patents maintained by CoMotion, can have significant impact on the strategic thrusts, business decisions, budget and revenue of CoMotion and the University. Most importantly, this position will need to ensure that CoMotion's and the University's goals and mission are considered and protected in relation to patent decisions and management. For effective decision-making, excellent partnering is required with CoMotion innovation managers.

DUTIES AND RESPONSIBILITIES Patent Application Drafting and Prosecution Activities: 60%

• Evaluation of invention disclosures from UW researchers for patentability and coordinate with Innovation Managers on patent filing strategy

• Conduct patent landscape searches and provide an appropriate review

• Prepare and file provisional patent applications

• Manage outside counsel and patent portfolios including coordination of effective communications on patent matters with Innovations Managers and Inventors

• Review relevant third party patents/patent publications

• Respond to inquiries from internal and external parties regarding patents and patent expenses

• Review patent portfolios (patent mapping) and identify issued patents and pending patent applications that do not provide value and therefore do not require further investments

• Educate and advise inventors and CoMotion staff on patent strategy

• Build relationships and trust with inventors and CoMotion staff

• Assist inventors with invention disclosures, conduct inventor interviews to identify new ideas and other disclosures

• In coordination with the Associate Director, Patents, ensure alignment of business strategy, technical direction, and IP strategy

• Evaluate the non-Provisional/PCT patent applications prepared, filed and prosecuted by outside counsel

• Review IP-related agreements for patent prosecution obligations and ensure terms are met

• Understand and discuss technologies related to UW innovations.

• May develop patent drafts with claims of appropriate scope

• May prepare voluntary claim amendments, office action responses, and appeal briefs as required for pending patent applications.Patentability Review and Decision Making: 30%The Patent Portfolio Manager exercises independent judgment and discretion in the performance of the position's functions and has delegated authority from the Associate Director, Patents to make necessary commitments that will affect the operations of the department.Process Improvement: 10%In collaboration with the Associate Director, Patents and other CoMotion staff, the position provides expertise in evaluating present practices; develops new initiatives and procedural efficiencies and will provide guidance on projects that do not warrant further allocation of University resources.The position assists the Associate Director, Patents in the review and formation of policy and procedures, and in developing strategies for improving the management of intellectual property. MINIMUM REQUIREMENTS Bachelor’s degree and four years of experience in a law firm or an intellectual property office or unit Equivalent education/experience will substitute for all minimum qualifications except when there are legal requirements, such as a license/certification/registration. ADDITIONAL REQUIREMENTS

• Must have current USPTO Registration Number

• Experience as a Patent Agent or Patent Attorney, including experience with prior art searches, assessing patentability, drafting provisional patent applications, responding to office actions, and managing patent portfolios.

• Experience in perfecting intellectual property rights and knowledge of federal and state laws, rules and procedures regarding intellectual property, including patents, copyright, and trade secrets. DESIRED QUALIFICATIONS

• Expertise in engineering and software patent subject matter.

• Experience in working collaboratively with researchers and industry.

• Demonstrated excellence in building relationships with inventors and/or clients.

• Familiarity with the Bayh-Dole Act and its process requirements for the University of Washington.

• Knowledge of UW policies and guidelines required in the protection of intellectual property through patents, copyright, trademark, etc.

• Knowledge of requirements from federal funding agencies, including marking patents, software, and products, and US embargo restrictions.

• Knowledge of and experience in international IP protection, including PCT filings and conversions CONDITITONS OF EMPLOYMENT

• Must live within commuting distance of UW Seattle Campus

• May be eligible for a hybrid work schedule.

• CoMotion also hosts events and meetings for which in-person attendance is mandatory Application Process: The application process may include completion of a variety of online assessments to obtain additional information that will be used in the evaluation process. These assessments may include Work Authorization, Cover Letter and/or others. Any assessments that you need to complete will appear on your screen as soon as you select “Apply to this position”. Once you begin an assessment, it must be completed at that time; if you do not complete the assessment, you will be prompted to do so the next time you access your “My Jobs” page. If you select to take it later, it will appear on your "My Jobs" page to take when you are access ready. Please note that your application will not be reviewed, and you will not be considered for this position until all required assessments have been completed.

University of Washington is an affirmative action and equal opportunity employer. All qualified applicants will receive consideration for employment without regard to, among other things, race, religion, color, national origin, sexual orientation, gender identity, sex, age, protected veteran or disabled status, or genetic information.