Licensing Associate I

University of Florida•Gainesville, FL

6d•Onsite

About The Position

The Licensing Associate I plays a crucial role in managing the patenting process, maintaining the Tech Licensing (TL) database, and ensuring the accuracy of technology and patent records. This position involves supporting inventors through oral disclosures, tracking publication dates for patent bar deadlines, and maintaining a shadow docket within the IP portfolio. The associate will also assist outside attorneys with prosecution decisions, manage a reminder system for deadlines, and provide final authorization for legal actions. A key responsibility is ensuring compliance with the UF Intellectual Property Policy and maintaining communication with inventors and licensees regarding filings with the USPTO and foreign patent offices. The role also involves reviewing patent, copyright, and trademark correspondence, monitoring cases for deadlines, and ensuring the accuracy of agreement records in the database, including license/options, Confidential Disclosure Agreements, and IIAs. Additionally, the associate will assist with invention reporting, patent filings with collaborative institutions, and become an expert user of the Tech Licensing database, generating reports for portfolio maintenance and quality assurance. This position requires safeguarding confidential information and contributing to process improvements. The associate will also be involved in training future Licensing Associates and assisting other licensing teams when needed. Continuous education on patent law, federal rules, UF policies, export control regulations, and industry impacts is expected.

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 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, policies, and procedures.
Attention to detail.
Ability to track and meet multiple overlapping deadlines.
Ability to multitask and prioritize and handle a consistently high volume of work.

Nice To Haves

At least two years of directly relevant experience is strongly preferred.
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.
General knowledge of U.S. patent law.

Responsibilities

Provide 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.
Maintain technology and patent records from disclosure to closure, ensuring accurate data entry and maintenance for reliable reports and analytics.
Participate in oral disclosure and follow-up meetings with inventors to ensure completeness of disclosure and receipt of supporting documents.
Track publication dates for patent bar deadlines.
Maintain a shadow docket within the IP portfolio and assist outside attorneys in obtaining instructions for prosecution decisions in a timely manner.
Maintain a reminder system for standard deadlines and milestones in prosecution and ensure accuracy of patent and technology records in the database.
Provide final authorization to counsel for any action and filing of any communications for non-action items.
Ensure records and decisions comply with the UF Intellectual Property Policy and provide prompt notice to inventors regarding timely review decisions.
Initiate and maintain communications with inventors and licensees to support appropriate filing, prosecution, and maintenance of filings with the USPTO and foreign patent offices.
Draft clear and concise communications relating to patent prosecution and case management.
Review all patent, copyright, and trademark related correspondences for 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 ensure IP rights are appropriately maintained.
Assist in ensuring all agreement records in the 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, ensuring timely and correct entry of information pertaining to all technologies, applicable patents, and IP related to agreements.
Ensure inventors, attorneys, and licensees' contact information is up to date during the life of a case.
Become proficient at querying the database and producing reports needed for regular maintenance of the portfolio, including quality assurance efforts and data consistency.
Assist with confidentiality agreements as needed.
Be aware of and safeguard dissemination of confidential information on a daily basis.
Provide input into necessary updates to modernize and improve processes outlined in the Standard Operating Procedures.
Work with the Team of Licensing Associates for possible training when onboarding future Licensing Associates and assist other licensing teams as necessary when a fellow LA is absent for an extended period.
Perform other duties as assigned.
Stay 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 affect technology transfer.