Position Information

Payroll Title: IP OFCR 3

Working Title: Intellectual Property Officer 3

UC Job Code: 000338

Job Open Date: 1/30/23

Application Review Begins: 2/14/23

Department Code (Name): RESD (Vice Chancellor of Research)

Percentage of Time: 100

Union Code: 99 - Non-represented (PPSM)

FLSA Status: Exempt

Grade Type/Grade: Grade 26

Hiring/Budgeted Salary or Hourly Range*: Salary offers are determined based on final candidate qualifications and experience; the budget for the position; and the application of fair, equitable, and consistent pay practices at the University. The full salary range for this position is $102,000 to $214,800 /yr. The budgeted salary or hourly range that the University reasonably expects to pay for this position is $102,000 to $150,000.

Work Location: 342 Lagoon Rd

Working Days/Hours: M-F, 8am - 5pm

Benefits Eligibility: Full Benefits

Eligible for Remote Work: Yes

Type of Remote or Hybrid Work Arrangement: Onsite, fully remote, or hybrid arrangements available

Special Instructions

For full consideration, please include a resume and a cover letter as part of your application.

Department Marketing Statement

The primary mission of UCSB's Office of Technology & Industry Alliances (TIA) is to build the foundation for long-term, productive and mutually beneficial relationships between UCSB and its industry collaborators. TIA was established in August 2005 with two main responsibilities: to manage the intellectual property developed through UCSB research (including out-licensing) and to manage the many agreements with industry partners that support research collaborations (including research agreements, material transfer agreements, non- disclosure agreements and memorandums of understanding). This intellectual property administration includes implementation of the University of California intellectual property policies, the evaluation and marketing of inventions and copyrightable works, the prosecution of patents, and the negotiation and administration of a variety of legal agreements related to licensing intellectual property. TIA also performs outreach to both the campus community and industry sector concerning technology transfer and research activities at UCSB. This includes working closely with UCSB startups who have or may license UCSB inventions.

Benefits of Belonging

Brief Summary of Job Duties

This position, under the general direction of the Director of the Office of Technology & Industry Alliances (TIA) within the Office of Research at the University of California Santa Barbara (UCSB), with day-to-day supervision and training provided by the Associate Director, Licensing, supports the office's licensing activities by, among other things, managing all aspects of patent prosecution for UCSB's 650+ invention portfolio, monitoring licensing agreements (including licensee compliance) and performing complex data analysis. In addition, this position manages approximately 1/3 of the UCSB technology portfolio which includes, among other things, evaluation and overseeing legal protection of assigned technologies (including total legal fee expenditures) and the negotiation, drafting and oversight of licensing agreement(s) related to such technologies and the revenues received by the university related to such agreements. The incumbent is expected to have a strong scientific background, preferably in a physical sciences and/or engineering field(s), full understanding of relevant technology transfer practices, industry and university practices and patent prosecution principles as well as be able to interpret and apply applicable UCSB and University of California system-wide technology transfer and licensing policies in order to resolve a wide range of issues while demonstrating good judgment in selecting the methods and techniques for solutions through performing with moderate to complex analysis and tracking multiple deadlines and issues.

Required Qualifications

Bachelor's Degree in related area or equivalent experience and/or training.

2 years of experience in tech transfer, with familiarity with all aspects of the field.

Preferred Qualifications

Master's Degree: preferably JD, MBA and/or Master's degree in a scientific field.

2-4 years of licensing experience at an academic, governmental or non-profit research entity.

Special Conditions of Employment

• Form 700 Statement of Economic Interests Filer
• Satisfactory conviction history background check.
• UCSB is a Tobacco-Free environment.

Job Functions/Percentage of Time/Duties

Campus Portfolio: IP strategy and management: 20%

Exercising a high degree of independence and autonomy, manage the patent prosecution for UCSB patent portfolio. Management includes, but is not limited to, overseeing invention intake process to assure it occurs efficiently and accurately and to assure any legal issues (including, for example, third party obligations) are accurately identified to licensing officer; assuring applicable federal and state compliance regulations are followed, oversee maintenance of internal databases to assure accuracy thereof (with assistance of Licensing Analyst). Serve as primary contact for, and issue instruction to, outside legal counsel. Oversee and authorize over $2.5M in expenditures to outside legal firms prosecuting patents on behalf of UCSB. Advise Associate Director, Licensing and/or Director on patentability of new inventions disclosed to the office. Develop and implement patent strategies, in collaboration with outside legal counsel and in consultation with licensing officers, as appropriate, that strive to maximize the breadth of patent coverage while minimizing expenditures. When complex issues arise during patent prosecution, develop and implement potential strategies to overcome or address the issues, in collaboration with outside legal counsel. Review patent portfolio regularly to recommend actions to the director and licensing officers to promote prudent fiscal management, including, but not limited to, reviewing issued patents for continued viability and relevance, and identifying patent prosecutions encountering significant challenges and recommend whether to continue the prosecution. Execute powers of attorney and other patent prosecution documents on behalf of UCSB (with assistance of Licensing Analyst). Assure Patent Tracking System (PTS) database invention and patent records are maintained accurately and complete, and reporting requirements to the federal government and other research sponsors are performed as required. Monitor Bayh-Dole filing deadlines and assure extensions are obtained, when needed. Monitor and analyze changes in external regulations, legislation and UC policies form impact on patent prosecution, updating and modifying attorney instructions, patent prosecution strategies, and internal business processes as necessary (with assistance of Licensing Analyst).

Campus Portfolio: Agreement Intake: 5%

Exercising a high degree of independence and autonomy, upon execution, analyze agreement terms (including licensing, options and letter agreements) to identify key licensing terms. Establish relationships with UCSB licensees. Monitor and manage licensee compliance with key agreement terms, identifying when certain terms (such as milestone or sublicense payments) are triggered, by among other things, reviewing licensee press releases and required progress and royalty reports. When irregularities or questions arise concerning progress or royalty reports, engage the licensee to understand and/or verify the information and develop strategy for, then implement, appropriate corrective action, consulting with the director and/or assigned licensing officer, as appropriate. Recommend royalty audit candidates to the director. With assistance of the Licensing Analyst, assure agreement database remains accurate and up-to-date and advise University of California Office of the President (UCOP) Innovation Alliances and Service (IAS)accounting office on financial terms and monitor to assure appropriate invoicing and rebilling procedures are adopted.

Campus Portfolio: Data Analysis/Report Preparation: 5%

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