University of Maryland, Baltimore
OPEN RANK: Patent Attorney or Senior Patent Attorney
University of Maryland, Baltimore, Baltimore, Maryland, United States, 21276
University of Maryland, Baltimore (UMB) is seeking a Patent Attorney or Senior Patent Attorney to join the Office of Research and Development's Technology Transfer department.
The position will be filled based on selected candidate's qualifications.
The Office of Technology Transfer handles all aspects of technology transfer including basic science, intellectual property development and management, technology marketing and license strategy and negotiation.
BENEFITS (Exempt Regular):
UMB offers a comprehensive benefits package that prioritizes wellness, work/life balance, and professional development. This position participates in a retirement program (pension or optional retirement plan/ORP) effective on your date of hire. Exempt regular staff receive a generous PAID leave package that includes over 4 weeks of vacation accrued each year, 15 paid holidays, 3 personal leave, unlimited accrual of sick time, comprehensive health insurance, professional learning and development programs, tuition remission for employees and their dependents at any University System of Maryland school, and flexible work schedules and teleworking options (if applicable per job).
UMB is a public university and constituent institution of the University System of Maryland. All employees are expected to work primarily physically within the State of Maryland.
Essential Duties for Patent Attorney:
Conducts patentability analysis for newly disclosed inventions and makes recommendations based on research of prior art and potential encumbrances.
Oversees the University’s patent portfolio, tracking the activities of external patent counsel.
Educates clients about the protection of internal information such as product formulas and working strategies.
Interfaces with faculty and staff to effectively use external counsel resources and provide general education in the patent process.
Researches and documents scientific and patent law rationale for UMB inventions.
Counsels clients on safe capital investment in intellectual property.
Manages licensing, importing and exporting, franchising, and proprietorship procedures.
Litigates illegal and illicit cases in U.S. courts and trade commissions.
Distributes copyrights and grants permission for reproduction of technology in other mediums.
Collaborates with team members to determine commercial potential, licenses, and contractual agreements.
Conducts registration processes for trademarks.
Performs other duties as assigned.
Essential Duties for Senior Patent Attorney:
Manages UMB’s patent portfolio, including preparing and reviewing patent applications for compliance with U.S. patent law.
Evaluates invention disclosures with support from the Patent Attorney, Patent Officer, and outside patent counsel.
Responds to inquiries on invention-related issues and reviews strategic options for protecting UMB inventions.
Delegates and supervises specific patent analysis and prosecution responsibilities to junior staff.
May conduct limited procurements to engage outside legal counsel for support in patent prosecution.
Monitors work and fees of outside patent counsel and provides general education in the patent and IP protection process.
Researches and documents scientific and legal rationales for patents on UMB owned inventions.
Reviews invention disclosures with faculty and resolves inventorship issues.
May review and make recommendations on material transfer, data sharing, and research agreements.
Consults with other UMB attorneys on legal issues related to OTT and ORD activity.
May provide legal advice to senior University staff concerning invention disclosures and patent issues.
Performs other duties as assigned.
Qualifications
MINIMUM QUALIFICATIONS
Education:
Juris Doctor required. Bachelor’s degree in life sciences field preferred.
Experience:
Patent Attorney:
Three (3) years of progressively responsible experience as an intellectual property officer or patent attorney, preferably in engineering or life science fields.
Senior Patent Attorney:
Six (6) years of progressively responsible experience as a patent attorney, preferably in life science or engineering fields.
Supervisory Experience:
None for Patent Attorney. Sr. Patent Attorney: At least two (2) years of experience supervising, mentoring, and evaluating other staff.
Certification/Licensure:
Patent Attorney:
Admission to the Patent Bar and registered with the United States Patent and Trademark Office (USPTO) within one (1) year of employment.
Sr. Patent Attorney:
Registered with USPTO at time of hire.
Admitted to a state bar at hire.
This is required by §10-206 of the Ann. Code of Md., Business Occupations and Professions Article.
Other:
Annual financial disclosure required by Maryland State Law.
KNOWLEDGE, SKILLS, ABILITIES
Knowledge of position requirements, applicable laws, and regulations. Skill in effective use of technology/systems. Ability to communicate effectively and work cooperatively with others.
HIRING RANGE:
$113,000 - $143,000 per year for Attorney/ $178,000 - $200,000 per year for Senior Attorney (Commensurate with education and experience)
UMB is an Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to sex, gender identity, sexual orientation, race, color, religion, national origin, disability, protected Veteran status, age, or any other characteristic protected by law or policy.
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The position will be filled based on selected candidate's qualifications.
The Office of Technology Transfer handles all aspects of technology transfer including basic science, intellectual property development and management, technology marketing and license strategy and negotiation.
BENEFITS (Exempt Regular):
UMB offers a comprehensive benefits package that prioritizes wellness, work/life balance, and professional development. This position participates in a retirement program (pension or optional retirement plan/ORP) effective on your date of hire. Exempt regular staff receive a generous PAID leave package that includes over 4 weeks of vacation accrued each year, 15 paid holidays, 3 personal leave, unlimited accrual of sick time, comprehensive health insurance, professional learning and development programs, tuition remission for employees and their dependents at any University System of Maryland school, and flexible work schedules and teleworking options (if applicable per job).
UMB is a public university and constituent institution of the University System of Maryland. All employees are expected to work primarily physically within the State of Maryland.
Essential Duties for Patent Attorney:
Conducts patentability analysis for newly disclosed inventions and makes recommendations based on research of prior art and potential encumbrances.
Oversees the University’s patent portfolio, tracking the activities of external patent counsel.
Educates clients about the protection of internal information such as product formulas and working strategies.
Interfaces with faculty and staff to effectively use external counsel resources and provide general education in the patent process.
Researches and documents scientific and patent law rationale for UMB inventions.
Counsels clients on safe capital investment in intellectual property.
Manages licensing, importing and exporting, franchising, and proprietorship procedures.
Litigates illegal and illicit cases in U.S. courts and trade commissions.
Distributes copyrights and grants permission for reproduction of technology in other mediums.
Collaborates with team members to determine commercial potential, licenses, and contractual agreements.
Conducts registration processes for trademarks.
Performs other duties as assigned.
Essential Duties for Senior Patent Attorney:
Manages UMB’s patent portfolio, including preparing and reviewing patent applications for compliance with U.S. patent law.
Evaluates invention disclosures with support from the Patent Attorney, Patent Officer, and outside patent counsel.
Responds to inquiries on invention-related issues and reviews strategic options for protecting UMB inventions.
Delegates and supervises specific patent analysis and prosecution responsibilities to junior staff.
May conduct limited procurements to engage outside legal counsel for support in patent prosecution.
Monitors work and fees of outside patent counsel and provides general education in the patent and IP protection process.
Researches and documents scientific and legal rationales for patents on UMB owned inventions.
Reviews invention disclosures with faculty and resolves inventorship issues.
May review and make recommendations on material transfer, data sharing, and research agreements.
Consults with other UMB attorneys on legal issues related to OTT and ORD activity.
May provide legal advice to senior University staff concerning invention disclosures and patent issues.
Performs other duties as assigned.
Qualifications
MINIMUM QUALIFICATIONS
Education:
Juris Doctor required. Bachelor’s degree in life sciences field preferred.
Experience:
Patent Attorney:
Three (3) years of progressively responsible experience as an intellectual property officer or patent attorney, preferably in engineering or life science fields.
Senior Patent Attorney:
Six (6) years of progressively responsible experience as a patent attorney, preferably in life science or engineering fields.
Supervisory Experience:
None for Patent Attorney. Sr. Patent Attorney: At least two (2) years of experience supervising, mentoring, and evaluating other staff.
Certification/Licensure:
Patent Attorney:
Admission to the Patent Bar and registered with the United States Patent and Trademark Office (USPTO) within one (1) year of employment.
Sr. Patent Attorney:
Registered with USPTO at time of hire.
Admitted to a state bar at hire.
This is required by §10-206 of the Ann. Code of Md., Business Occupations and Professions Article.
Other:
Annual financial disclosure required by Maryland State Law.
KNOWLEDGE, SKILLS, ABILITIES
Knowledge of position requirements, applicable laws, and regulations. Skill in effective use of technology/systems. Ability to communicate effectively and work cooperatively with others.
HIRING RANGE:
$113,000 - $143,000 per year for Attorney/ $178,000 - $200,000 per year for Senior Attorney (Commensurate with education and experience)
UMB is an Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard to sex, gender identity, sexual orientation, race, color, religion, national origin, disability, protected Veteran status, age, or any other characteristic protected by law or policy.
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