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 Intellectual Property Officer (“IP Officer”) will report to the Associate Director for Intellectual Property and develop close relationships with Licensing and Business Development Officers to enable the successful management of a large patent portfolio in Life or Physical Sciences.
Key Responsibilities:
- 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 external 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 researchers and outside counsel, 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.
- 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.
Others:
- Assist Associate Director of IP in
- Mentoring IP administrative staff when needed
- Training and development of interns for CTL’s internship program in coordination with the Director of Innovations Partnerships
- Representing CTL at seminars, conferences, and CTL outreach events
- Stay current on all developments in intellectual property law through case studies, communication with IP counsels, workshops and conferences.
Preferred Qualifications:
- Registered patent agent or patent attorney with an advanced technical degree.
- Up to date, extensive knowledge of intellectual property law, especially patent law, both US and foreign
- Proven experience, minimum of 3 years, in managing large patent portfolios and outside counsels in an academic technology transfer office, company or law firm.
Other welcome attributes:
- Proven ability to interact with a wide range of people in a professional and ethical manner, including colleagues, faculty, students, business development professionals, lawyers, and investors.
- Excellent communication skills – listening, presenting, and writing – with proven sensitivity and ability to manage confidential information.
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, visit the position specification.
