Donald Danforth Plant Science Center
Job Summary
The IP Management Specialist reports to the Director of Innovation Commercialization (Director) for the Donald Danforth Plant Science Center and has the job responsibilities listed below.
Management of Intellectual Property Protection Workflow
The IP Management Specialist assists the Director of Innovation Commercialization, research personnel, and outside IP counsel with intellectual property protection by managing processes to ensure efficient IP protection workflow including:
– Receiving technology disclosures
– Responding to requests from Danforth Center personnel for patent searches and other IP information research
– Managing workflow for patent prosecution activities, including tracking deadlines and maintenance of Danforth Center IP portfolio
– Coordinating communication and meetings with outside IP counsel, Director, and Danforth scientific personnel
– Reviewing patent drafts for correspondence to items identified in meetings, phone calls, and email correspondence
– Advise Director on patent filing strategies and options
– Preparing and reporting on trademark clearance searches
– Preparing trademark class use descriptions
– Reviewing trademark prosecution documents prepared by IP counsel
– Collecting specimens of use and other evidentiary materials necessary for maintenance of trademark registrations
– Review outside IP counsel invoices, and submitting for approval and payment
– Managing patent annuity payments
– Providing support to ensure that IP protection activity deadlines are met
– Generating status reports regarding IP for Director, IP Committee, and other Danforth Center personnel
Management of Intellectual Property Databases and document archive
The IP Management Specialist is responsible for maintaining IP databases that track inventions, patents, licenses, grant awards, and related IP contracts as listed below, and for maintaining IP document library on Danforth Center server:
– Maintaining of an IP database (Inteum) to track documents and due dates associated with all disclosures, patents, research grants and other IP related documents
– Track relevant information regarding discoveries and inventions including: patents, licenses, funded grants, IP related contracts including expiration dates, milestones, patent prosecution activity deadlines
– Maintaining of database required to meet obligations under grants from federal funding agencies, iEdison
– Organizing and storing templates and executed agreements on Danforth Server folder
– Coordinating with grants compliance staff to ensure reporting obligations are met
Management of Intellectual Contracts and Agreements
In order to protect Danforth Center IP, reduce risk exposure in accordance with Danforth Center policies and best practices, and to support the achievement of the Danforth Center’s mission as it relates to achieving impact from science, the IP Management Specialist is responsible for coordinating, drafting, reviewing, and participating in negotiations for a variety of IP related contracts that enable and execute research and licensing opportunities related to Danforth Center patents and discoveries. The IP Management Specialist also performs contract risk analysis for Director. Agreements and contracts include:
– Confidentiality and Non-disclosure Agreements
– Biological Material Transfer Agreements (MTA, IUBMTA, SMTA)
– Biological Material Transfer with Limited Research Use License and Option for Commercial License
– Inter-Institutional IP Agreements (between Danforth and universities and government agencies)
– License agreements for commercialization of Danforth Center inventions
Skills and Knowledge
· Careful attention to detail and accuracy
· Self-motivation
· Ability to prioritize multiple tasks/requests/assignments and manage multiple priorities
· Ability to recognize and comprehend a variety of legal and policy issues in contracts, especially as they pertain to IP ownership and use rights among parties
· Ability to exercise sound judgment, discretion, and tact
· Appreciation of the importance of and ability to maintain confidential information
· Ability to function effectively under tight deadlines
· Effective communication skills (written and verbal)
· Customer service ethos
· Ability to work effectively and cooperate with outside parties, and with faculty and other staff at the Danforth Center
Education/Experience Requirements
· Bachelor’s degree or equivalent 3+ years of progressively responsible experience with contracts and agreements in a university or industry environment
· Software working knowledge for Microsoft Word, Excel, Power Point
· Basic understanding of intellectual property protection and licensing principals
· Familiarity with database entry and maintenance preferred
· Experience with execution of IP agreements preferred
To apply, please submit a cover letter and a CV with three or more references and their full contact information to https://www.danforthcenter.org/careers/
