Patent Manager

Cincinnati Children's•Andrews, IN

1d•Onsite

About The Position

The Patent Manager will be responsible for evaluating disclosed technologies for patenting and commercialization potential, developing and implementing marketing and patenting plans, and managing all active agreements. This role involves regular interaction with investigators to educate them about commercialization, identify new technologies, and determine when research should be protected and marketed. The Patent Manager will also work with a marketing manager to assess market needs, market size, and existing technologies/products, and perform prior art searches to assess patentability. Additionally, the role includes managing patent prosecution lifecycle, serving as the point of contact with external patent counsel, and maintaining accurate records in institutional systems.

Requirements

Bachelor's degree in a related field
5+ years of work experience in a related job discipline

Nice To Haves

Advanced Degree in a related field

Responsibilities

Evaluate disclosed technologies for patenting and commercialization potential.
Develop and implement marketing and patenting plans for inventions.
Draft and negotiate term sheets, options, licenses and other agreements.
Manage all active agreements.
Support Sponsored Research Services in reviewing intellectual property language for certain agreements related to your portfolio.
Assess the ability to share research tools.
Regularly meet with investigators in assigned divisions to stay abreast of their research.
Educate investigators about the commercialization of research.
Determine when research should be protected and marketed or when pieces of an investigator's research can be developed into a commercial product.
Help the investigator understand the process and the value of technology commercialization.
Provide support in all aspects of technology transfer to all CHMC employees.
Identify new technologies.
Work with our marketing manager to determine if there is a market need for technologies in progress and analyze if the market can support the technology.
Assess the size of the market, the value of the technology, existing technologies/products, and identify businesses interested in the technology.
Perform prior art searches to assess patentability of inventions disclosed to the office.
Draft and file documents required by USPTO.
Manage all active patents.
Identify opportunities to improve portfolio management and establish SOPs as appropriate.
Lead in-house patent-related processes to ensure the completion of all necessary requirements during the patent prosecution lifecycle.
Serve as the point of contact with external patent counsel regarding office actions, filing documents, billing matters, etc.
Collaborate with counsel to optimize the processes between the CTC and the law firms.
Provide drafts of patent applications and office action responses to external counsel, along with other necessary filing documents.
Attend relevant educational events and share leanings with the CTC and others at CCHMC.
Facilitate interactions between CCHMC investigators and external counsel.
Maintain accurate records in institutional systems to track intellectual property, disclosures, and agreements.
Ensure assessments are completed for proper government and funding reporting.
Engage with funding agencies as necessary and negotiate for proper revenue sharing.