Intellectual Property Docket Specialist jobs in West Virginia

The Office of General Counsel at West Virginia University is currently accepting applications for an Assistant/Associate General Counsel for Intellectual Property.

About the Opportunity

This position supports the West Virginia University innovation ecosystem, the Assistant/Associate General Counsel for Intellectual Property will be responsible for performing intellectual property analysis and assisting in developing intellectual property protection strategies for West Virginia University (“WVU”). Reporting to the University’s General Counsel through the Executive Director of Intellectual Property and Licensing in the Office of the General Counsel, the Assistant/Associate General Counsel for Intellectual Property will be charged with (i) identifying University derived intellectual property; (ii) working with outside counsel to protect University intellectual property; and (iii) promoting a culture of innovation and entrepreneurship at WVU.

We strongly believe in work-life balance and keeping time for things we love outside our work. WVU offers generous benefits, including:

• 37.5-hour work week
• 13 paid holidays (staff holiday calendar)
• 24 annual leave (vacation) days per year or more based on years of service (employee leave)
• 18 sick days per year (for when you’re ill, for when you need time to care for sick family, for your own, or your family’s, regularly scheduled medical appointments. Who is family for the purpose of this leave? A lot of people in your life including immediate relatives and in-laws as well as others considered to be members of your household living under the same roof)
• WVU offers a range of health insurance and other benefits
• 401(a) retirement savings with 6% employee contribution match, eligibility to continue health insurance, and other retiree perks. Looking for more retirement benefits information? Check out retirement health insurance benefits, retirement income, and FAQ’s.
• Wellness programs

What You'll Do

• Develop and implement strategies to identify inventions arising from WVU research.
• Establish and maintain relationships with University researchers to (i) source disclosures, (ii) seek intellectual property protection prior to public disclosure, and (iii) communicate intellectual property protection strategies to researchers.
• Provide education to faculty, staff, and students on intellectual property and University policies, including Board of Governance Rule 1.5 – Intellectual Property.
• Perform patentability searches and evaluations for inventions to determine the optimal intellectual property protection strategy. Present recommendations for protecting University technologies to University leadership.
• Provide support to University innovators through educational and informational meetings regarding patent processes and commercialization of inventions.
• Review technologies with WVU’s Innovation and Commercialization Team and University leadership to obtain approval for filing patent applications and licensing for novel & marketable technologies.
• Lead the communication between researchers and patent counsel during the drafting of provisional and non-provisional patent applications, copyright, or trademark applications. Direct counsel on intellectual property decision strategies.
• Provide input to licensing negotiations on behalf of WVU for potential licensees of University technologies.
• Collaborate with colleagues to manage the University’s portfolio of intellectual property assets and corresponding relationships with researchers and University licensees.
• Work closely with WVU’s Office of Sponsored Programs to review intellectual property terms and conditions in pending research contracts or proposals.
• Meet with groups of researchers and administrators as needed to foster a culture of invention cultivation and commercialization for University-developed technologies.
• Form working relationships with the deans, associate deans, and chairs in the units most likely to produce intellectual property that can be commercialized.
• Assist with and coordinate programing related to innovation and entrepreneurship.
• Maintain knowledge of the various entrepreneurial functions on campus.
• Provide advice and counsel on research related activities engaged in by the University, WVURC, and UIC, including, but not limited to federal, state, or administrative agency research and contract compliance issues, industry clinical research, and conflict of interest.
• Maintain a working knowledge of the databases in the office to support intellectual property development, compliance, and record keeping functions.
• Coordinate federal (Bayh-Dole), financial, and post-license compliance in cooperation with Office staff.
• Train, oversee, and assist in the management of office interns.
• Attend and represent the University at national and state meetings concerning technology transfer and protection of intellectual property.
• Provide advice and assistance with the Office of General Counsel on strategic public-private industry engagements and associated business transactions, pre-litigation or litigation activities involving University research and intellectual property, and open records requests (West Virginia Freedom of Information Act, subpoenas) related to the University’s research enterprise.
• Perform legal review and negotiation of Non-Disclosure Agreements (NDAs), Confidentiality Agreements (CDAs), Material Transfer Agreements (MTAs), Data Use Agreements (DUAs), Joint Intellectual Property Management Agreements, Inter-Institutional Agreements (IIAs), Option Agreements, License Agreements, and associated legal transactions to advance the commercialization of University intellectual property.
• Conduct legal research and draft memoranda to advise University leadership.
• All other duties related to University research and intellectual property as may be assigned from time to time by the Executive Director of Intellectual Property and Licensing or General Counsel of WVU.
• Maintain knowledge of the various entrepreneurial functions on campus.

• Advanced Degree of JD from an accredited law school required.
• A minimum of two (2) years of experience in the following:
  • Experience interpreting and applying U.S. patent and copyright laws.
  • Experience working with faculty innovators or entrepreneurs.
  • Experience in contract law, as well as the negotiation and drafting of contracts.
• Strong ability to collaborate across multi-disciplinary units.
• Strong oral and written communication skills, including skill in large group presentations.
• Strong ability to function in an environment with changing objectives and goals.
• High level of professionalism and independence including the ability to solve complex and time sensitive problems.
• Ability to maintain composure, professionalism, and positive attitude during lengthy periods of high volume, intensive work.

• Valid Driver’s License
• License to practice before the United States Patent and Trademark Office (USPTO)

At West Virginia University, we leverage our talents and resources to create a better future for our state and the world. As West Virginia's land-grant university, WVU has three campuses that touch each corner of the state. The WVU System includes 518 buildings on 15,880 acres, Extension Service offices in all 55 counties, ten experimental farms and four forests.

From the groundbreaking R1 research of our flagship campus in Morgantown to the career-oriented programs of WVU Potomac State in Keyser to the technology-intensive programs at WVU Tech in Beckley — the contributions of WVU employees directly impact the 1.8 million people of West Virginia every day, no matter their role or position.

Service, curiosity, respect, accountability, and appreciation are the core values that unite Mountaineers, inspiring one another to work tirelessly and support others as they seek to reach new heights. After all, when you're a Mountaineer, impossible is just another mountain to climb.

Creating an inclusive, engaged, and dynamic learning environment is core to WVU’s academic mission. We welcome candidates who can contribute a range of ideas, approaches and experiences.

West Virginia University is proud to be an Equal Opportunity employer and is the recipient of an NSF ADVANCE award for gender equity. The University values diversity among its faculty, staff, and students, and invites applications from all qualified applicants regardless of race, ethnicity, color, religion, gender identity, sexual orientation, age, nationality, genetics, disability, or Veteran status.