OPEN RANK: Patent Attorney or Senior Patent Attorney

University of Maryland, Baltimore • Full-time • Baltimore, MD, US • $113k - $200k / year • 3m ago

University of Maryland, Baltimore (UMB) is seeking a Patent Attorney or Senior Patent Attorney to join the Office of Research and Development's Technology Transfer department. The position will be filled based on selected candidate's qualifications.The Office of Technology Transfer handles all aspects of technology transfer including basic science, intellectual property development and management, technology marketing and license strategy and negotiation. UM Ventures is a joint initiative of the MPowering the State Program to commercialize discoveries and create economic impact.

BENEFITS (Exempt Regular):

UMB offers a comprehensive benefits package that prioritizes wellness, work/life balance, and professional development, along with additional exciting perks that employees can take advantage of. This position participates in a retirement program (pension or optional retirement plan/ORP) that must be selected and is effective on your date of hire. Exempt regular staff receive a generous PAID leave package that includes over 4 weeks of vacation accrued each year, 15 paid holidays, 3 personal leave, unlimited accrual of sick time, and comprehensive health insurance; professional learning and development programs; tuition remission for employees and their dependents at any University System of Maryland school; and flexible work schedules and teleworking options (if applicable per job).

UMB is a public university and constituent institution of the University System of Maryland. All employees are expected to work primarily physically within the State of Maryland.

Essential Duties for Patent Attorney:

Conducts patentability analysis for newly disclosed inventions. Makes recommendations to patent based on research of prior art and the potential for encumbrances.
Oversees the University’s patent portfolio, tracking the activities of external patent counsel. May monitor counsel charges and be authorized to approve expenses.
Enlighten clients about the ways of protection of internal information like product formula, working strategies and protocols
Interfaces with faculty and staff to effectively use external counsel resources and provide general education in the patent process.
Research and documents scientific and patent law rationale for UMB inventions.
Counsel clients on the safe ways of capital investment in intellectual property
Carry out licensing, importing and exporting, franchising and proprietorship procedures
Litigate illegal and illicit cases in the court and trade commission of United States
Distribute copyrights and grant permission for reproduction of technology in another medium.
Works in concert with team members determining commercial potential, licenses and contractual agreements.
Conduct registration processes during creation of trademark
Perform other duties as assigned.

Essential Duties for Senior Patent Attorney:

Manages UMB’s patent portfolio or assigned parts of the portfolio, including preparing patent applications and reviewing and approving patent applications prepared by others, to ensure compliance with U.S. patent law. Keeps abreast of changes in law, policies, and practices relevant to patenting UMB inventions.
With support of the Patent Attorney, the Patent Officer and outside patent counsel, evaluates invention disclosures and conducts research and analysis related to potential patent protection for the disclosed inventions.
Responds to inquiries on invention-related issues or office actions presented by external counsel, and reviews strategic options and recommends plans of action for protecting UMB inventions that are patentable.
Delegates and assigns specific patent analysis and prosecution responsibilities to Patent Attorney(s) and Patent Officer(s); supervises their work; trains and mentors the junior staff to increase their knowledge, independence and productivity.
Subject to approval of the senior administrator of OTT and ongoing approval of the Office of the Attorney General (OAG) and Office of University Counsel, may conduct limited procurements to engage well-qualified and cost-effective outside legal counsel to support OTT activities by invention evaluation and national and international patent prosecution. Outside counsel engaged may be tasked to work with U.S. applications or international applications. May monitor counsel charges and be authorized to approve counsel invoices.
Monitors work and fees of outside patent counsel and may be authorized to approve invoices from outside counsel.
Provides general education in the patent and IP protection process for UMB faculty, staff, and administrative and academic leadership.
Research and documents scientific and legal rationales for patents on UMB owned inventions.
Interfaces with technology transfer offices of other universities and of research sponsors.
Reviews invention disclosures with the faculty and other UMB personnel named as inventors. Confirms inventorship and resolves inventorship issues.
May review, evaluate and make recommendations on material transfer, data sharing, and research agreements related to invention disclosures and patent applications.
As requested by the OAG or the Office of University Counsel, consults with other UMB attorneys concerning legal issues related to OTT and ORD activity, claims related to patent rights, and patent license matters.
May provide legal advice to senior University staff in OTT, ORD, and other units concerning invention disclosures and patent issues. Does not provide legal advice to inventors concerning their roles and rights under University policy.
Performs other duties as assigned.

Qualifications

MINIMUM QUALIFICATIONS

Education: Juris Doctor required. Bachelor’s degree in life sciences field preferred.

Experience:

Patent Attorney: Three (3) years of progressively responsible experience as a intellectual property officer or patent attorney, preferably in engineering or life science fields, with substantial responsibility for evaluating invention disclosures and preparing patent applications.
Senior Patent Attorney: Six (6) years of progressively responsible experience as a patent attorney, preferably in life science or engineering fields, with substantial responsibility for evaluating invention disclosures and preparing patent applications independently.

Supervisory Experience: None for Patent Attorney. Sr. Patent Attorney: At least two (2) years of experience supervising, mentoring and evaluating other staff.

Certification/Licensure:

Patent Attorney: Admission to the Patent Bar and registered with United States Patent and Trademark Office (USTPO) within one (1) year of employment.
Sr. Patent Attorney: Registered with United States Patent and Trademark Office (USPTO), at time of hire.

Admitted to a state bar at hire. This is required by §10-206 of the Ann. Code of Md., Business Occupations and Professions Article. Failure to maintain a state bar membership and limit practice as required by Maryland law may result in termination of employment. Admission to practice in Maryland is strongly preferred.

Other: Annual financial disclosure required by Maryland State Law.

KNOWLEDGE, SKILLS, ABILITIES

Knowledge of position requirements. Knowledge of all applicable requirements, regulations, and laws. Skill in effective use of applicable technology/systems. Ability to effectively communicate both verbal and written thoughts, ideas, and facts. Ability to work cooperatively with others and independently. Ability to demonstrate, understand, apply, and adhere to the UMB Core Values of Respect and Integrity, Well-being and Sustainability, Equity and Justice, and Innovation and Discovery.

HIRING RANGE: $113,000 - $143,000 per year for Attorney/ $178,000 - $200,000 per year for Senior Attorney (Commensurate with education and experience)

UMB is an Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to sex, gender identity, sexual orientation, race, color, religion, national origin, disability, protected Veteran status, age, or any other characteristic protected by law or policy. For assistance related to employment, please contact the Staffing department at HRJobs@umaryland.edu.

If you anticipate needing a reasonable accommodation for a disability under the Americans With Disabilities Act (ADA), during any part of the employment process, please submit a UMB Job Applicant Accommodation Request. You may also contact HRDiversity@umaryland.edu. Please note that only inquiries concerning an ADA request for reasonable accommodation will be responded to from this email address.

The University of Maryland, Baltimore prohibits sex discrimination in any education program or activity that it operates. Individuals may report concerns or questions to the Title IX Coordinator. For more information, follow this link UMB Notice of Non-Discrimination.

Job: Reg or CII Exempt Staff - E1401H

Employee Class : Exempt Regular

Full Time/Part Time: Full-Time

Shift: Day Job

Financial Disclosure: Yes

Organization: Research and Development - Technology Transfer

Job Posting: Oct 14, 2024

Unposting Date: Oct 20, 2024, 10:59:00 PM