Licensing Associate I

University of Florida•Gainesville, FL

7d•Onsite

About The Position

This position provides support in the management of all aspects of the patenting process, including data entry and ongoing maintenance of the Tech Licensing (TL) database and electronic records. The role involves maintaining technology and patent records throughout their lifecycle, ensuring accurate data entry for reliable reports and analytics. Responsibilities include participating in inventor meetings, tracking publication dates for patent bar deadlines, maintaining an IP portfolio shadow docket, and assisting outside attorneys with prosecution decisions. The associate will manage a reminder system for deadlines, provide final authorization for counsel actions, and ensure compliance with the UF Intellectual Property Policy. Communication with inventors and licensees regarding filings, prosecution, and maintenance with USPTO and foreign patent offices is expected, along with drafting clear communications and reviewing patent, copyright, and trademark correspondence. The role also involves tracking cases for prosecution deadlines, consulting with supervisors on actions, and ensuring agreement records (license/options, CDAs, IIAs) are accurate. Coordination of invention reporting and patent filings with collaborative institutions and industry partners is also part of the role. Administratively, the associate will become an expert user of the Tech Licensing database, ensuring timely and correct entry of information on technologies, patents, and agreements, and keeping contact information up-to-date. Proficiency in database querying for reports, quality assurance, and data consistency is required. Assistance with confidentiality agreements and safeguarding dissemination of confidential information is necessary. Input into process updates for Standard Operating Procedures and training future Licensing Associates are also expected, along with other assigned duties.

Requirements

A bachelor's degree in an appropriate area of specialization or an equivalent combination of education and experience.
Knowledge of MS Office programs and ability to work with a complex database.
Ability to deal with the stakeholders in a courteous and professional manner.
Ability to work independently.
Excellent written and oral communication skills.
Ability to organize and maintain accurate and complete records.
Excellent human relations skills, including the ability to function in a team setting.
Ability to plan, organize and coordinate work assignments.
Ability to understand and apply applicable rules, regulations and policies and procedures.
Attention to detail.
Ability to track and meet multiple overlapping deadlines.
Ability to multitask and prioritize and handle consistently high volume of work.
General knowledge of U.S. patent law.

Nice To Haves

At least two years of directly relevant experience is strongly preferred AND if the person has been with UF TL for those past two years or more, their overall performance reviews must exceed expectations for the past two consecutive years, with specific emphasis on exceeding performance metrics.
An Associate’s degree and/or experience as a legal assistant.

Responsibilities

Provides support in the management of all aspects of the patenting process, including data entry and ongoing maintenance of the Tech Licensing (TL) database and electronic records.
Maintains the technology and patent records during the life of the technology from disclosure to closure and assures accurate data is entered and maintained at all times to ensure that reports and analytics are accurate at all times.
Participate in oral disclosure and follow-up meetings with inventors to assure completeness of disclosure and any assure receipt of related supporting documents.
Responsible for tracking publication dates for patent bar deadlines.
Maintain a shadow docket within the IP portfolio and assist outside attorneys in obtaining instructions for prosecution decisions within a timely manner.
Maintain reminder system for standard deadlines and milestones in prosecution and assures accuracy of patent and technology records in database.
Provide final authorization to counsel for any action and filing of any communications for non-action items.
Understands and ensures records and decision comply with the UF Intellectual Property Policy and that prompt notice is provided to the inventors with respect to timely review decisions.
Initiate and maintain communications with inventors and licensees as necessary to support appropriate filing, prosecution and maintenance of filings with the USPTO and foreign patent offices.
Expected to draft clear and concise communications relating to patent prosecution and case management.
Review all patent, copyright, and trademark related correspondences to ensure accuracy, completeness, and timeliness.
Track and regularly monitor each case for impending prosecution deadlines and consult with supervisor to confirm instructions on an action to assure that IP rights are appropriately maintained.
Assist to make sure all agreement records in database including license/options, Confidential Disclosure Agreements, and IIAs are accurate and complete.
Assist with the coordination of invention reporting efforts and patent filings with collaborative institutions, labs, and outside industry partners under specific agreements.
Become an expert user of Tech Licensing’s database assuring information pertaining to all technologies, applicable patents and IP related to agreements, are timely entered and correct.
Assure inventors, attorneys and licensees contact information is up to date during life of case.
Become proficient at querying the database and producing reports needed for regular maintenance of the portfolio including quality assurance effort and data consistency.
As needed, assist with confidentiality agreements.
On a daily basis, be aware of and safeguard dissemination of confidential information.
Provide input into necessary updates to modernize and improve the processes outlined in the Standard Operating Procedures
Work with the Team of Licensing Associates for possible training when on boarding future Licensing Associates and assisting other licensing teams as necessary when a fellow LA is absent for an extended period.
Other duties as assigned.
Responsible for staying up to date on changes in patent law as it impacts intellectual property, Federal rules and regulations, UF State and Federal policies, UF required on-going institutional training as assigned by HR, continued education for internal standard operating procedures, export control regulations and industry specific impacts that effect technology transfer.