OTC Legal Coordinator

Duke Careers•Durham, NC

About The Position

This position provides support to the Office for Translation and Commercialization by managing patent records, legal documentation, and Federal compliance obligations associated with the University’s intellectual property portfolio. This position works closely with in-house counsel, patent agents, licensing associates, inventors, and external counsel to ensure the accurate administration of patent prosecution, portfolio management, and Bayh-Dole compliance activities. This position reports to the Director, Legal Affairs. OTC is responsible for patents, technology licenses, translation, new venture development and angel investing for Duke University. OTC is also responsible for billing, collecting and distributing large amounts of dollars through a myriad of diverse transactions. Through direct, daily interaction with faculty, small and large businesses, and venture investors, we build strong relationships and enter into agreements to translate academic discoveries into commercial products that benefit society, impact public health, and improve the quality of life.

Requirements

Bachelors degree generally required. General knowledge in the legal field is preferred.
Requires four years working in related field or equivalent combination of relevant education and professional experience.
Possess working knowledge of basic patent law and with filing procedures of US provisional patent applications and other formal documents with the United States Patent and Trademark Office sufficient to respond to routine inquiries.
Demonstrate the utmost level of discretion and confidentiality
Excellent customer service, interpersonal, team work, written/verbal communication, time management and organizational skills.
Detail-oriented and accurate in all tasks.
Ability to work with minimal supervision, independently and as a team member.
Experience and aptitude in working with complex databases.
Proficiency with SAP and MS Office (Word, Excel, Powerpoint) software.
Ability to understand and obtain proficiency with outside vendor software.
Familiarity with technology transfer, licensing, contract language, legal terms, patent prosecution and intellectual property matters.

Nice To Haves

Familiarity with Bayh-Dole compliance and iEdison reportings preferred.

Responsibilities

Manage and maintain accurate, complete, and highly confidential records for intellectual property matters handled by OTC.
Monitor and manage the OTC legal mailbox, including reviewing correspondence from outside counsel, responding as appropriate, and recording communications in the office’s intellectual property database.
Establish and maintain patent dockets based on deadlines issued by domestic and foreign patent offices for use by in-house counsel and licensing associates.
Open and maintain electronic files for new patent, copyright and trademark matters, update records in response to instructions and reports received from in-house counsel, licensing associates, outside counsel and licensees.
Complete intake review and approval of Invention Disclosure Forms (IDFs) in the office’s intellectual property database.
Coordinate the preparation, execution, and retention of legal documents related to patent prosecution, including assignments, inventor oaths and declarations, powers of attorneys, and entity status documents (US and foreign).
Assist in-house counsel with the filing of US provisional patent applications.
Provide administrative and procedural support to outside counsel in connection with US and PCT utility applications, formal documents, and other prosecution-related matters.
Support inventor engagement and IP matter coordination in collaboration with in-house counsel, patent agents and licensing staff.
Assist in the gathering of inventor signatures for time-sensitive patent office documents.
Administer the University’s intellectual property compliance obligations under Bayh-Dole and related Federal agencies.
Create, update, and close iEdison records for Federally funded inventions.
Complete annual and ad hoc reporting requirements for sponsoring agencies.
Coordinate with sponsoring agencies, outside counsel, Duke’s Office of Research Support and/or Duke’s Office of Research Administration to respond to compliance inquiries and requests.
Prepare financial reports, cost estimates, and docketing forecasts for active technologies using the office’s intellectual property database, outside vendor systems (e.g., CPI annuity service), and common office software (e.g., Excel).
Perform financial tasks related to IP management, such as completing expense reports for the Director of Legal Affairs for patent expenses, paying law firms, reconciling legal costs & reimbursements, etc.
Compose, edit, and distribute formal correspondence on behalf of the Director of Legal Affairs and other OTC staff requiring confidentiality, accuracy, and sound judgement.
Serve as a liaison between the OTC, Duke University, Duke University Health System, faculty and staff, and external counsel. Familiarity with the internal organization and workings is preferred.
Perform other related duties incidental to the work described herein.