Love where you work at the Office of Technology & Industry Alliances (TIA). We are actively recruiting for the positions below.
The Office of Technology and Industry Alliances (TIA), within the Office of Research (OR) at the University of California Santa Barbara (UCSB), manages intellectual property developed through UCSB research, executes agreements with industry partners that support research collaboration and relate to campus research activities (including MTAs, DUAs and NDAs), and performs outreach to both the campus community and industry sector concerning technology transfer and research activities at UCSB. Campus intellectual property administration includes implementation of the University of California (UC) intellectual property policies, the evaluation and marketing of inventions and copyrightable works, the prosecution of patents, and the negotiation and administration of a variety of legal agreements related to the patenting and licensing of UCSB intellectual property.
Working at UC means being part of this vibrant institution that shines a light on what is possible. People make UC great, and UC recognizes your contributions by making this a great place to work. Excellent retirement and health are just one of the rewards . Learn more about the benefits of working at UC
This position, under the general direction of the Director, with day-to-day supervision and training provided by the Associate Director, Licensing, supports the office’s patent, licensing and related compliance activities. The Licensing Analyst is responsible for supporting the management of the UCSB technology portfolio, which consists of over 650 technologies, and related patent prosecution activities. The incumbent is generally responsible for 1) in-take, review and processing of new technology invention disclosures; communications with inventors, joint-owners, and outside counsel at various stages of the invention review process; 2) ensuring all required invention- and patent-related agreements (such as assignment and power of attorney agreements) are generated, executed and docketed (with assistance of the TIA Office Manager); 3) docketing all patent prosecution correspondence and ensuring that the key responsible individuals are informed of due dates and/or actions that need to be taken including but not limited to TIA staff, UCSB inventors, outside patent counsel and licensees; 4) establishing and maintaining data in the UC Patent Tracking System (PTS) and related databases as needed and maintaining all case files on the TIA shared drive; 5) managing all government reporting and compliance under the Bayh-Dole Act related to invention disclosures and patent filings (including but not limited to iEdison reporting) and 6) tracking and running financial reports related to patent prosecution expenses and coordinate as needed with the UC Office of the President regarding licensee invoicing and royalty distributions as needed. The incumbent needs to be highly proficient working with IP data information systems and have the ability to learn to use applicable business systems. In sum, the Licensing Analyst is responsible for independently tracking, docketing, and monitoring of actionable patent prosecution items for the entire UCSB portfolio. Licensing Analyst receives, reviews, and analyzes patent prosecution matters including complex IP prosecution history, cross-checking accuracy of information against internal patent tracking databases, data logs, and correspondence. He/she develops, implements, and improves the TIA docketing workflow and processes, as needed, working with other TIA staff, UCSB outside attorneys and other patent/legal practitioners to establish best practices and ensure compliance with applicable federal government, UC and UCSB policies and best practices.
Criminal history check (U02): Satisfactory conviction history background check
UCSB is a Tobacco-Free environment
Throughout the life of each invention, review and analyze all patent correspondence from outside patent counsel to identify key legal deadlines and necessary legal and other actions to maintain patent protection and viability. Advise Director and appropriate TIA staff member of upcoming deadlines sufficiently in advance for meaningful decision-making and timely actions. Assure patent tracking database (PTS) remains accurate and up-to-date, reflecting the critical information provided in patent correspondence from outside patent counsel, and patent prosecution correspondence documents are properly archived. Prepare and/or review US and foreign prosecution documents, including Power of Attorneys, Assignments, Declarations and other documents for Director’s signature. Research and acquire necessary prior art documents, upon request, for Information Disclosure Statements and other patent filings. Using patent PTS and various publicly available databases, design and prepare both regular and customized, ad-hoc reports for the Director, other TIA staff and UCSB departments, as appropriate, to pull metrics concerning: (a) UCSB’s patent portfolio and various subsets of the portfolio; and (b) ongoing patent prosecution costs. Research and answer questions from inventors, TIA licensing officers, faculty and licensees concerning patent application information and prosecution instructions. Recommend, design and implement various tracking tools, databases and procedures to monitor upcoming statutory bar dates, filing dates, and other significant prosecution deadlines proactively.
Review PTS and other available internal resources to confirm funding sources used to develop invention and, in the case federal funding was used, ensure full compliance with reporting requirements under the Bayh-Dole Act. Throughout the life of each invention and patent prosecution, ensure federal compliance requirements and reporting is complete, via iEDISON or other required means of communication, including, but not limited to, the time election of title, reporting of filed patent applications, confirmatory licenses, utilization reports and patent closure. Assure appropriate government support clause appears in all patent filings involving federal funding. Review weekly outstanding notification messages from iEdison and take appropriate corrective actions to resolve them. Advise Director on any corrections to required federal reports that require outside counsel’s assistance. Recommend, design and implement various procedures and tracking systems to ensure reporting deadlines are timely met in a manner consistent with the Bayh-Dole Act.
Review executed license agreements and prepare financial checklists summarizing key financial terms. Coordinate with UCOP Accounting to assure UCOP Accounting properly reflects key licensing terms in PTS. Monitor licensee compliance with license terms, including financial obligations, diligence and milestone obligations, and reporting obligations. In the case of non-compliance, advise Director and relevant licensing officer, identify and, upon approval, implement corrective actions. Assure federal compliance requirements and reporting is complete with respect to all license agreements and commercialization efforts. Prepare and produce regular and customized, ad-hoc reports, upon request, concerning licensee compliance with diligence, milestone and financial obligations. Recommend, design and implement various procedures and tracking systems to monitor licensee compliance proactively.
Perform special projects from time-to-time as assigned by the Director of TIA.
As a condition of employment, you will be required to comply with the University of California Policy on Vaccinations Programs – With Interim Amendments. As a condition of Physical Presence at a Location or in a University Program, all Covered Individuals must participate in any applicable Vaccination Program by providing proof that they are Up-to-Date with any required Vaccines or submitting a request for Exception in a Mandate Program or properly declining vaccination in an Opt-Out Program no later than the Compliance Date (Capitalized terms in this paragraph are defined in the policy.). Federal, state, or local public health directives may impose additional requirements.
For more information:
* Covered Individuals: A Covered Individual includes anyone designated as Personnel, Students, or Trainees under this Policy who physically access a University Facility or Program in connection with their employment, appointment, or education/training. A person accessing a Healthcare Location as a patient, or an art, athletics, entertainment, or other publicly accessible venue at a Location as a member of the public, is not a Covered Individual.
UC Santa Barbara is an Equal Opportunity/Affirmative Action Employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.
The University of California endeavors to make https://jobs.ucsb.edu accessible to any and all users. If you would like to contact us regarding the accessibility of our website or need assistance completing the application process, please contact Katherine Abad in Human Resources at 805-893-4664 or email email@example.com. This contact information is for accommodation requests only and cannot be used to inquire about the status of applications.
Privacy Notification Statement, Notice of Availability of the UCSB Annual Security Report Disclosures, General Data Protection Regulation (GDPR) Statement for Persons in the European Economic Area, Background Checks, and Notice of Availability of the UCSB Annual Security Report
Payroll Title: IP OFCR 2
Job Code: 6237
Department Code (Name): RESD
Union Code (Name): 99
Employee Class (Appointment Type): 2 – Staff: Career
FLSA Status: Exempt
Classified Indicator Description (Personnel Program): PSS
Salary Grade: 23
* Salary offers are determined based on final candidate qualifications and experience, the budget for the position, and application of fair, equitable and consistent pay practices at the University. The full salary range for this position is $75,800 to $149,600. The budgeted salary range that the University reasonably expects to pay for this position is $76,000 to $90,000.
Benefits Eligibility: Full Benefits