The Center for Technology Licensing (CTL) is Cornell University’s technology transfer office. They manage Cornell technologies from Cornell’s Ithaca campus, Weill Cornell Medicine, Cornell Tech and Cornell AgriTech.
CTL’s mission is to catalyze technology commercialization to develop products and services from university innovations for societal benefit, promote new technology ventures to foster economic development within New York State and across the nation, and grow industry alliances to develop innovation by leveraging University IP and research.
For more information about the Center of Technology Licensing, please visit: www.ctl.cornell.edu
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.
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.
Preferred Qualifications:
- 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
Other welcome attributes:
- Excellent people skills to motivate and manage individuals at different professional levels.
- Ability to build strategic relationships within CTL, across campus and with third parties.
- Excellent communication skills – listening, presenting, and writing – with proven sensitivity and ability to manage confidential information.
- The professional is expected to manage and solve problems in challenging situations independently with limited supervision.
Interested candidates should email resume, deal sheet/past deals negotiated, and salary expectations to:
Lisa Rooney
740-251-7390
For more information and the application process, view the position specification.
