Director of Intellectual Property Administration

1. Lead, manage and direct Yale Ventures' Intellectual Property Administration team responsible for : a. New invention disclosure intake and adherence to Yale Patent Policy procedures b.

Compliance with federal and non-federal funding obligations including timely reporting via iEdison and other portals as specified within the terms of funding agreements c.

Patent / intellectual property protection and portfolio management processes including developing and maintaining relationships with external law firms, coordinating with external patent counsel on filing new applications, monitoring and processing ongoing prosecution and related correspondence, and docket administration of key deadlines and events 1) Management of patent related expenses and relevant invoicing in compliance with annual budget d.

License and other agreement compliance and maintenance including general database management and ensuring data integrity / accuracy in Yale Ventures' information management databases 2.

Collaborate with leadership to develop and lead the execution of a comprehensive strategy for delivering high quality and efficient business services related to the entire technology transfer process and all other office activities.

3. Develop, maintain and implement updated office policies and procedures to ensure efficient operations and coordination with other activities of the office.

4. Identify and address opportunities for improvements in major administrative processes, including patent administration, government compliance, patent cost management, and other activities.

5. Develop and maintain various custom reports relating to annual metrics / goals, inventions, patents, and government reporting databases.

6. Government Audit - Coordinate with Yale General Counsel to respond to governmental notices of audits by providing pertinent information and documentation.

7. Foundation Audits (HHMI, VA, AHA, JDRF) - Respond to requests for audits by private foundations or charitable organizations by managing the collection of pertinent information and documentation.

8. Due Diligence Requests - Respond to due diligence requests by working with patent attorneys to provide intellectual property reports, official filing documentation, expense reports, and documentation of chain of title of ownership.

9. Elevated Inventorship Matters - Coordinate with outside patent attorney to address inventorship issues and concerns to make inventorship assessment in accordance with 35 USC 101.

Working with patent attorneys provide relevant communications and privileged documentation to General Counsel for review and determination.

10. Litigation Matters - Work with Yale General Counsel to provide information and documentation requested in Motion of Discovery requests including relevant correspondence and liaise with Yale General Counsel and outside IP law firm to provide response to any requests.

11. Advise and oversee IP Admin team activities as related to database migration to ensure smooth transition and high degree of data accuracy and integrity.

Train new staff on processes and database reporting 12. Perform other duties as required by the position.

The experience expected from applicants, as well as additional skills and qualifications needed for this job are listed below.

Required Skill / ability 1 : Demonstrated experience managing a team, preferably in a university technology transfer office or similar environment.

Required Skill / ability 2 : Strong interpersonal, communication, and leadership skills, with a focus on excellent customer service.

Ability to establish & maintain positive relationships, communicate & comprehend instructions effectively to / from a diverse group of stakeholders.

Required Skill / ability 3 : Self-motivated individual with ability to exercise discretion & confidentiality, and address and resolve any issues.

Exceptional organizational skills, with ability to efficiently handle multiple projects, set priorities, and work independently to meet objectives.

Required Skill / ability 4 : Proven experience working in relational databases and experience transitioning between database systems.

Demonstrated experience implementing and working with Salesforce(r) CRM system preferred.

Required Skill / ability 5 : Demonstrated experience with gathering, organizing and analyzing data with high level of accuracy and attention to detail.

Preferred Education : Proven experience in intellectual property management, compliance or legal / paralegal documentation.

Work Week : Standard (M-F equal number of hours per day)

Posting Position Title : Associate Director, Intellectual Property Admin

University Job Title : Director of Intellectual Property Administration

Preferred Education, Experience and Skills : Proven experience in intellectual property management, compliance or legal / paralegal documentation.

Bachelor's degree and minimum 7 years of relevant and demonstrated experience, or equivalent combination of education and demonstrated experience.

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