Associate Director, Intellectual Property (Legal)
University of Rhode Island - Kingston, RI

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This position is limited to 06-30-2014 with extension contingent on funding.

BASIC FUNCTION:

In consultation with the Associate Vice President for Research, advise faculty and students regarding intellectual property (IP) agreements; evaluate, protect, and license IP agreements, and evaluate the IP provisions of sponsored research agreements. Provide technical/legal expertise to the Executive Director of the URI Research Foundation in commercializing IP agreements.

ESSENTIAL DUTIES AND RESPONSIBILITIES:

Advise faculty and students regarding IP agreements, including awareness of the URI technology transfer program, encouraging faculty, staff and students to participate therein, via oral presentations and written materials.

Review, revise and negotiate the following: confidential disclosure agreements (CDAs), non-disclosure agreements (NDAs), material transaction agreements (MTAs), and IP provisions of sponsored research agreements with federal and non-profit organizations.

Evaluate and/or draft licensing and research agreements, if necessary with outside counsel, including patent, trademark and copyright license agreements, inter-institutional agreements, and sponsored research agreements, and work with the Associate Vice President for Research to negotiate licensing terms.

Monitor and track licensees to determine if they are complying with license terms, such as required reports and payment of royalties, fees and other licensing revenues, and, if needed, take action to bring them into compliance.

Identify potential IP infringers, investigate alleged infringement and, if needed, take action to end the infringement.

Assist in the formation of companies, including drafting corporate legal documents with the Executive Director of the URI Research Foundation.

Establish and maintain a service-oriented working relationship with customers, including URI administrators, URI creators of IP, and potential partners in businesses or in other institutions.

Work with the Associate Vice President for Research, as needed, to protect new inventions and innovations produced by faculty and students. Act as the lead for copyrights and trademarks protection.

Work with the Associate Vice President for Research and Executive Director of the URI Research Foundation on the full spectrum of commercialization duties.

OTHER DUTIES AND RESPONSIBILITIES:

Perform other duties as assigned.

LICENSES, TOOLS AND EQUIPMENT:

Personal computers, printers; word processing, database management and spreadsheet software.

ALL REQUIREMENTS ARE SUBJECT TO POSSIBLE MODIFICATION TO REASONABLY ACCOMMODATE INDIVIDUALS WITH DISABILITIES.

Required Qualifications:
Required:

1) Registered attorney with a degree in a life or physical science.

2) Registered to practice before the USPTO for a minimum of two years.

3) A minimum of two years of experience in drafting and prosecuting patent applications in life or physical sciences.

4) A minimum of two years of experience in drafting intellectual property agreements for licensing intellectual property, including CDA, NDA, MTA research and licensing agreements.

5) A minimum of one year of experience negotiating intellectual property licensing agreements in either academic or corporate settings.

6) Demonstrated excellent communication (verbal and written) and interpersonal skills.

7) Demonstrated ability to organize intellectual property documents in an effective manner.

8) Demonstrated ability to organize, coordinate and supervise support staff.

9) Demonstrated proficiency in using database management, spreadsheet and word processing software.

10) Demonstrated commitment to diversity.

Position Number:
108412

Preferred Qualifications:
Preferred:

1) PhD in a life or physical science.

2) Demonstrated experience in negotiating federal contract agreements.

Environmental Conditions:
This position is not substantially exposed to adverse environmental conditions.

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