Intellectual Property Director

University of California Berkeley - Berkeley, CA (30+ days ago)4.2


About Berkeley
The University of California, Berkeley, is one of the world’s most iconic teaching and research institutions. Since 1868, Berkeley has fueled a perpetual renaissance, generating unparalleled intellectual, economic and social value in California, the United States and the world. Berkeley’s culture of openness, freedom and acceptance—academic and artistic, political and cultural—make it a very special place for students, faculty and staff.

Berkeley is committed to hiring and developing staff who want to work in a high performing culture that supports the outstanding work of our faculty and students. In deciding whether to apply for a staff position at Berkeley, candidates are strongly encouraged to consider the alignment of the Berkeley Workplace Culture with their potential for success at http://jobs.berkeley.edu/why-berkeley.html.
Departmental Overview
The Innovative Genomics Institute (IGI) is a non-profit, academic research organization formed through the partnership of UC Berkeley and UC San Francisco. Led by Executive Director Jennifer Doudna, the IGI combines the fundamental research expertise at UCB and UCSF to address important societal challenges. IGI focuses on unraveling the mechanisms underlying CRISPR-based genome editing and applying this technology to improve human health, (including personalized and tissue-selective delivery of human therapeutics), improve plant varieties for environmental and agricultural uses, and create new microbe-inspired biotechnologies. To complement this work, the IGI puts special emphasis on education about the scientific and societal implications of genome engineering.
Responsibilities
Involves advising faculty and the campus on intellectual property (IP) rights protection, business start-up and other technology transfer related issues. Evaluates the commercial potential of research results, obtains and manages the appropriate IP rights protection, markets inventions and software, and/or biological/tangible materials; drafts and negotiates IP licenses and Material Transfer Agreements (MTAs) and IP terms in research and collaboration agreements. Works with companies who wish to sponsor research and/or license technologies from campus researchers. Ensures adherence to federal and state laws regarding research, conflict of interest, IP, contracts and employment. Works with outside patent attorneys to file patent applications.

Based at UC Berkeley, the IGI IP Director is a critical member of the organization’s management team. Reporting to the Vice Chancellor for Research, and with a dotted line reporting relationship to the Executive Director of the IGI, this position is responsible for the short and long term leadership, coordination, and oversight of creating and managing IP and helping to create opportunities for commercialization of technologies developed at the IGI. The position focuses on strategic development and implementation in three key areas: strategic management of intellectual property, development and stewardship of industry collaborations, and fostering a culture of innovation and entrepreneurship that will lead to start-ups.

Intellectual Property/Patents:
  • Represents IGI on the most complex intellectual property matters
  • Independently develop and manage patent portfolios for research areas/inventions
  • Initiate novelty, patentability, right to use, and state-of-art patent searches
  • Oversee invention disclosures, determine patentability of institution's inventions and guide patent filing decisions
  • Independently prepare documents and correspondence on a broad range of issues relating to intellectual property/technology transfer agreements.
  • Assist PIs in drafting project descriptions to define project-related IP and advise on “background IP” issues
  • Develop database of IP landscape relating to IGI research areas
  • Work with outside counsel in preparation, filing and prosecution of patent applications, USPTO office actions, and patent litigation (e.g. prepare and/or gather supporting documentation)
  • Support UC Office of the General Counsel and outside law firms in legal defense and/or infringement suits
  • Evaluate and work on continuous improvement of the IGI’s systems and procedures to ensure effective/efficient management of IP and related portfolios
  • Oversee system for internal review process prior to publication or external presentation
Business Development/Commercialization:
  • Develop and promote an robust and successful environment of innovation and entrepreneurship for the IGI
  • Advise IGI researchers on strategies for access to licenses and assist with obtaining access/license to UC IP/inventions for start-up activities.
  • Advise IGI researchers on aspects of entrepreneurial/start up activities, including incubator space, incorporation, financing structures/options, strategies for business plan development, and provide resources and contacts when needed
  • Draft and/or negotiate complex agreements involving inventions/IP and licensing for internal parties and external parties
  • Negotiate intellectual property clauses in unique, complex sponsored and collaborative research agreements, including system wide, campus-wide or company-wide
  • Market new technology to potential industrial partners and facilitates start-ups.
  • Recommends broad exceptions to policy
Other:
  • Provide advice/counsel and develop materials to educate members of IGI on IP, tech transfer, commercialization, start up activities (including process, strategy, financing, and other related areas)
  • Oversee and report on IP budget and activity
  • Assess staffing levels for IP support and supervise contract employees or future hires
  • Attend national and regional meetings to stay abreast of current developments on patent law, research administration and research compliance.
  • Manage material transfer agreements
  • Ensure IGI researchers are in compliance with the terms in collaborative research agreements
  • Ensure appropriate agreements are executed when necessary (MTA, CDA, NDA, etc.)
  • Recommends broad exceptions to policy when needed and appropriate.
Required Qualifications
  • Advanced scientific degree (MS or PHD) required or equivalent of experience.
  • Requires expert, state-of-the-art knowledge of a broad functional work area, and broad application of advanced principles, concepts and theories such as laws, regulations, and practices pertaining to the protection and management of intellectual property, university technology transfer, general scientific and/or technical skills in subject matter area, and management experience
  • Ability to market technology to industrial partners
  • Knowledge of contracts, grants and gifts
  • Able to contribute to development of new concepts and policies
  • Able to generate pro forma estimates of equity holdings/evaluations.
  • Experience in marketing early stage science and technology
  • Understanding of basic science, especially biology and genomics
  • Strong skills at design for publications and visual displays and exhibits
  • Ideally, candidate will have an established network of biotech/genomics industry contacts.
Preferred Qualifications
  • Patent agent or law degree
  • MBA preferred or equivalent of experience.
Salary & Benefits
Salary will be commensurate with experience.

For information on the comprehensive benefits package offered by the University visit:

http://ucnet.universityofcalifornia.edu/compensation-and-benefits/index.html
How to Apply
Please submit your cover letter and resume as a single attachment when applying.
Conviction History Background
This is a designated position requiring fingerprinting and a background check due to the nature of the job responsibilities. Berkeley does hire people with conviction histories and reviews information received in the context of the job responsibilities. The University reserves the right to make employment contingent upon successful completion of the background check.
Equal Employment Opportunity
The University of California is an Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or protected veteran status. For more information about your rights as an applicant see: http://www.eeoc.gov/employers/upload/poster_screen_reader_optimized.pdf
For the complete University of California nondiscrimination and affirmative action policy see:
http://policy.ucop.edu/doc/4000376/NondiscrimAffirmAct