Sr. Intellectual Property Manager (Johns Hopkins Technology Ventures)

Johns Hopkins University; Baltimore (MD); On-site; USD 120,000 - 180,000; Full time

Job summary

Johns Hopkins University invites applications for a Sr. Intellectual Property Manager who will independently manage a docket of software-based technologies and develop IP strategies, patenting approaches, and assets for commercialization.

Reporting to the Director of Intellectual Property Management, you will collaborate with faculty, staff, students and outside counsel to file patents, protect IP, and coordinate budgets and timelines across Johns Hopkins Technology Ventures.

Qualifications

• Advanced degree in computer science or related field.
• Registered Patent Agent with relevant IP experience.
• Four years of related intellectual property experience.
• Additional education or experience can substitute per policy.

Responsibilities

• Meet with inventors regarding IP strategy discussions and reports of invention.
• Cultivate timely service with faculty inventors and stakeholders.
• Evaluate inventions for IP potential and patentability through prior art analysis.
• Work with IP counsel to file patents, copyrights, trademarks as needed.
• Develop IP landscapes and identify market opportunities for disclosures.
• Direct patent counsel in preparation, filing, and prosecution of U.S. and international applications.
• Manage IP budget, track filing obligations, and coordinate with licensing staff.

Skills

IP strategy

Patent budgeting

Stakeholder mgmt

Salesforce

Microsoft Office

Data analysis

Communication skills

Cross-functional

Research evaluation

Education

Advanced degree in Computer Science

Tools

Salesforce

Job description

Johns Hopkins Technology Ventures (JHTV) supports the commercialization of university technology through technology licensing, the development of sponsored research agreements, and venture creation. We serve as business advisors to investigators at all ten schools of the university whose research has commercial potential. Our resources include intellectual property (IP) protection, technology analysis, marketing and licensing support, translational and venture funding support, physical space through our FastForward innovation hubs, and professional services such as mentorship, pro bono legal and accounting services, and educational programming.

We are seeking a Sr. Intellectual Property Manager, reporting to the Director of Intellectual Property Management. The Senior IP Manager will independently manage a docket of software based technologies and utilize advanced skills in strategic IP assessment and patenting strategies. Through interactions with faculty members, staff, students, and outside counsel, the Senior IP Manager will develop IP strategy, manage patent prosecution and develop intellectual property assets for commercialization.

Specific Duties & Responsibilities

• Meet with inventors regarding Reports of Invention for intellectual property strategy discussions using tools such as pre-analysis checklists.
• Cultivate and maintain timely customer service with faculty inventors.
• Evaluate inventions for intellectual property potential which may include conducting preliminary prior art search and analysis, if necessary, to identify patentable and commercially valuable subject matter.
• Work closely with IP counsel to file for appropriate IP protection, i.e., patent applications, copyrights, trademarks, etc.
• Work closely with internal staff and groups to generate IP landscapes for invention disclosures to identify market opportunities.
• Interface with internal and external counsel to coordinate patent decisions within a fixed budget.
• Engage in outreach and education related to JHTV’s mission, intellectual property and technology transfer practices.
• Develop and implement IP protection strategies for inventions retained by the university in consultation with licensing staff, inventors and IP counsel. Track and fulfill filing obligations for licensed technologies in portfolio.
• Direct patent counsel in the preparation, filing and prosecution of U.S. and international patent applications.
• Maintain a Computer Packages (CPI) docket for tracking filing obligations for their assigned portfolio.
• Provide oversight and management of the patent budget for assigned cases.
• Establish and maintain contacts with industry IP managers, patent counsel and representatives at other academic institutions.
• Work with SalesForce and Inteum databases to review IP for encumbrances or other issues before marketing material is sent to potential licensees.
• Other duties as assigned.

Minimum Qualifications

• Advanced Degree in Computer Science.
• Registered Patent Agent.
• Four years of related intellectual property experience.
• Additional education may substitute for required experience, and additional related experience may substitute for required education beyond a high school diploma/graduation equivalent, to the extent permitted by the JHU equivalency formula.

Preferred Qualifications

• U.S. Citizen or legal permanent resident required due to Federal Export Controls.

Special Knowledge, Skills & Abilities

• Able to understand complex technologies.
• Able to make independent judgments and act on decisions on a daily basis and assume responsibility for decisions, consequences, and results having an impact on people, costs, and/or quality of service within the functional area.
• Able to work with flexibility on several tasks simultaneously and to meet various concurrent deadlines.
• Able to work in matrix environment with collaborative mindset.
• Strong computer skills including proficiency in Microsoft Office applications. Experience with Salesforce preferable.
• Experience with various software applications (e.g. spreadsheets, relational databases, statistical and graphic packages), to assemble, manipulate and/or format data and/or reports.
• Able to effectively interact with all levels of industry and University employees.
• Highly organized, resourceful, and detail oriented.
• Excellent communication, presentation, and interpersonal skills.