Intellectual Property Analyst

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Intellectual Property Analyst
The candidate will assist with evaluating IP and determining the patentability of institution's inventions. Will act as a bridge between patent counsel and inventors and licensing officers to translate the nuances and jargon of patent drafting and office action responses to simplistic elements that can be easily understood. Docket, manage, track, and monitor the UCR IP portfolio activities will be required, as necessary. Interact with internal and external stakeholders, including others on the Technology Commercialization and Technology Partnerships team, UCR faculty and students, and with external law firms. Report to the Director of Technology Commercialization as part of the Office of Technology Partnerships within Research and Economic Development at the University. Assist inventors, faculty, licensing officers and management by providing analysis of inventions for multiple factors in determining patentability and offers recommendations in strategy and resolutions to issues throughout the patent prosecution process. Ensure patent (US and foreign) procedural requirements, timelines, Bar dates, and regulations are met. Act as a bridge between patent counsel and inventors and licensing officers to translate the nuances and jargon of patent drafting and office action responses to simplistic elements that can be easily understood. Assist with coordinating with researchers on commercialization strategy. On a regular and recurring basis, meet with researchers and licensing officers to review research direction in order to develop intellectual property strategy and review federal grants and industry contract reports for identification of potentially patentable IP. Communicate with and between researchers and all necessary internal and external parties to accomplish goals. Coordinate with the licensing officer and members from the Entrepreneurial Programs within the Office of Technology Partnerships, as necessary. Docket, manage, track, monitor UCR patent portfolio activities, including invention disclosure review and acceptance, patent application filings (US and foreign), office actions, attorney invoicing, maintenance fees and annuities. Provide instruction to external attorneys on patent matters when necessary and as authorized by officers and management. Assist with preparation and completion of patent documents, responses, filings, and forms. Stay up to date on current US and foreign case law, updates in USPTO rules, related UC policy, and other updates to regulations related to IP and patent procedure and educates officers and management as necessary. Under general supervision, research and collect data on markets and corporations to identify potential licensees that have the highest probability of successfully commercializing a technology or intellectual property. Under general supervision, advise on basic intellectual property clauses, contracts and agreements in sponsored and collaborative research agreements. Assist with conducting legal and/or policy analysis and recommend exceptions to policy.

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