Job Description

The mission of The University of Texas M. D. Anderson Cancer Center is to eliminate cancer in Texas, the nation, and the world through outstanding programs that integrate patient care, research and prevention, and through education for undergraduate and graduate students, trainees, professionals, employees and the public.

The Patent Paralegal is responsible for managing federal and other contract compliance requirements for all invention disclosure reports to OTC.

JOB SPECIFIC COMPETENCIES

IP Financial Compliance

1) Liaise between General Accounting and Licensees to ensure compliance of patent related expenses, including:

a) Ensure monthly LEDES reports received from outside counsel are in the correct format and uploaded to patent database correctly

b) Ensure all patent expenses are coded correctly and work with General Accounting to ensure appropriate stakeholder is billed

c) Identify and resolve any billing errors

d) Create expense and receivable records in database

Manage all aspects of M. D. Anderson's obligations associated with 37 CFR 401 in accordance with the federally mandated reporting timeline

2)Manage all aspects of M. D. Anderson's obligations associated with 37 CFR 401 in accordance with the federally mandated reporting timeline. This includes:

a)Invention disclosures

i)Review disclosures for funding.

ii)Coordinate with Technology Analyst to confirm all funding has been correctly listed.

iii)Request corrected disclosures for uploading.

b)Election decisions

i)Confirm with paralegal on disposition of disclosure and report out as necessary via iEdison.

ii)Confirm with paralegal for any patent application filings and issuance and update iEdison accordingly.

iii)Confirm that the government support clause is correctly listed in the patent application before filing with the US Patent Office.

c)Waiver requests

i)Review iEdison record for any outstanding notification messages

ii)Clear any messages prior to waiving.

iii)Coordinate with paralegal for any corrections that may require outside counsel assistance.

iv)Upload via iEdison and/or with other agencies who do not use iEdison

d)Requests of U.S. manufacturing requirements

e)Preparing confirmatory licenses for signature and upload via iEdison.

f)Managing utilization reports

i)Coordinate with licensing manager and paralegal regarding status and licensing revenues.

ii)Upload via iEdison on annual basis.

g)Review the iEdison weekly for any noncompliance notifications, and address those notifications in a timely basis manner.

h) Liaise with Grants and Contracts on grant reporting to ensure that OTC and Grants and Contracts have accurate information with regards to government reporting for inventions

Manage all aspects of M. D. Anderson's obligations associated with other agreements (e.g. material transfer agreements, collaboration agreements

3) Manage all aspects of M. D. Anderson's obligations associated with other agreements (e.g. material transfer agreements, collaboration agreements) that gave rise to an invention that was submitted to the Office of Technology Commercialization to ensure all reporting is complete. transfer agreements, collaboration agreements) that gave rise to an invention that was submitted to the Office of Technology Commercialization to ensure all reporting is complete.

IP Docket Compliance

4) Responsible for compliance of the docketing function for all patent related matters, including:

a) Ensuring all statutory deadlines related to patent prosecution matters are met (including timely responses to office actions, issue fee deadlines, IDS, conversion deadlines, etc.)

b) Processing Assignments, Powers of Attorney and Declarations between UT MDACC and UT Board of Regents

c) Confirming patent annuity and maintenance fee payments on a quarterly basis

d) Entering new applications into patent database and updating database for any changes in patent application status, ensuring all records are in compliance and up-to-date

e) Provide ad-hoc IP status reports and queries

f) Develop and maintain good relationships with outside counsel, licensees, and other internal and external stakeholders

g) Enhance IP compliance program and generate new systems where necessary to streamline existing processes.

Manage all aspects of M. D. Anderson's obligations associated with funding agreements

5) Manage all aspects of M. D. Anderson's obligations associated with funding agreements that gave rise to an invention that was submitted to the Office of Technology Commercialization.

a)Review disclosures for funding and other compliance obligations.

b)Coordinate with Technology Analyst to confirm all funding has been correctly listed.

c)Communicate with the funding agency and/or industrial sponsor, of the receipt of the new intellectual property stemming from their support.

d) Liaise with Office of Sponsored Programs on funding reporting (e.g. CPRIT, LLS) to ensure that OTC and Grants and Contracts have accurate information with regards to government reporting for inventions

Education

Required: Bachelor's degree.

Experience

Required: Two years of experience related to patents and/or contract compliance. May substitute required education degree with additional years of equivalent experience on a one to one basis.

Preferred: Experience with Grants and Contracts. Previous experience in a research or scientific environment.

It is the policy of The University of Texas MD Anderson Cancer Center to provide equal employment opportunity without regard to race, color, religion, age, national origin, sex, gender, sexual orientation, gender identity/expression, disability, protected veteran status, genetic information, or any other basis protected by institutional policy or by federal, state or local laws unless such distinction is required by law. http://www.mdanderson.org/about-us/legal-and-policy/legal-statements/eeo-affirmative-action.html

Additional Information

* Requisition ID: 136826
* Employment Status: Full-Time
* Employee Status: Regular
* FLSA: exempt and not eligible for overtime pay
* Work Week: Days
* Fund Type: Soft
* Pivotal Position: Yes
* Minimum Salary: US Dollar (USD) 59,600
* Midpoint Salary: US Dollar (USD) 74,500
* Maximum Salary : US Dollar (USD) 89,400
* Science Jobs: Yes