Patent Coordinator

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Patent Coordinator
Responsibilities: With regard to identifying IP opportunities, understand and leverage all aspects of law covering patents and the intellectual property rights of inventors: Develop and maintain relationships with inventors so as to drive growth of INVO’s patent estate and advance program initiatives. Discuss inventions and processes with inventors, ascertaining and communicating the likelihood of patents being granted. Suggest modifications or extensions to the definition of the invention with inventors. With regard to optimizing IP opportunities, study and analyze scientific or technical documents, including previously granted patents, to assess whether a new invention is patentable. Write detailed descriptions of inventions in precise legal terms (patent drafts) for review and discussion with inventors to obtain broadest possible coverage. With regard to INVO’s law firm partners, effectively engage external counsel to apply for and secure patents from USPTO and the international patent offices, including preparation of complex technical arguments and responses to patent office actions and reports from patent examiners. Ensure application and renewal deadlines are met and appropriate information is entered in INVO’s database (Wellspring). With regard to INVO’s licensing activities, assist Invention Managers and Associates with structuring, drafting and negotiating complex technology, IP, licensing, and other commercial agreements. Work with licensees pre- and post-agreement to ensure licensees’ obligations are clear and compliance is achieved. As appropriate, assist the Office of General Counsel in resolving disputes involving patents and technology licenses (e.g., as a technical advisor to counsel representing University). With regard to project management, work with Inventors and their Administrators to insure complies with terms of agreements, particularly reporting requirements vis-à-vis external sponsors and their respective agreements and corresponding IP rights. Advise on other intellectual property rights, e.g. designs or trademarks. Keep up to date with legal developments in the intellectual property field.

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