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University of California, Berkeley · 3 weeks ago

Intellectual Property Director (0340U), Innovative Genomics Institute - #83237

Berkeley, CA

Full-time

Hybrid

Director/Executive

$221K/yr - $300K/yr

The University of California, Berkeley is a world-leading institution known for its academic and research excellence. The Intellectual Property Director at the Innovative Genomics Institute will oversee the management of intellectual property and foster innovation and commercialization opportunities for technologies developed at the IGI.

Responsibilities

IP Strategy & Development: Represent IGI on the most complex intellectual property matters, meeting with inventors to discuss ideas, suggest necessary experimental data to support broader claims, and determine optimal patent filing strategies based on research progress and publication timelines

Portfolio Management & Prosecution: Independently develop and manage patent portfolios for research areas/inventions. Work with outside counsel in the preparation, filing, and prosecution of patent applications, including reviewing and editing draft applications, negotiating claim sets, and developing worldwide national phase strategies in consultation with inventors and the UC system’s technology transfer office (IPIRA)

Landscape Analysis & IP Clearance: Initiate novelty, patentability, right-to-use, and state-of-the-art patent searches. Conduct deep landscape analyses for specific IGI projects to identify potentially blocking intellectual property, competition, and geographical patent rights, advising researchers on strategies for IP clearance

Disclosure & Compliance: Oversee invention disclosures, determine patentability of institution's inventions, and guide patent filing decisions. Review draft publications and external presentations for any potential IP issues prior to public disclosure

Legal Support & Liaison: Support UC Office of the General Counsel and outside law firms in legal defense and/or infringement suits. Track all IGI filings in an internal database and liaise with IPIRA weekly to ensure seamless communication on provisional filings, PCT conversions, and licensee prosecution instructions

Policy & Process Improvement: Evaluate and work on continuous improvement of the IGI’s systems and procedures to ensure effective/efficient management of IP and related portfolios

Commercial Strategy & Counseling: Advise IGI researchers on strategies for access to licenses and assist with obtaining access/license to UC IP/inventions for start-up activities. Provide counsel on entrepreneurial/start-up aspects, including incorporation, financing options, business plan development, and connecting them with relevant campus and VC resources

Entrepreneurial Program Leadership: Develop, promote, and manage robust, successful entrepreneurial programs (e.g., accelerators, fellowships) to support researchers, staff, and students interested in commercial development. This includes meeting with potential donors, implementing application processes, reviewing proposals, and negotiating master agreements for program execution

Contract Negotiation: Draft and/or negotiate complex agreements involving inventions/IP and licensing for internal and external parties. Negotiate intellectual property clauses in unique, complex sponsored and collaborative research agreements, ensuring compliance with IGI/UC Berkeley IP policies

External Representation & Networking: Market new technology to potential industrial partners, facilitate start-ups, and represent IGI in the campus-wide entrepreneurial community and at external organizations (e.g., industry showcases, corporate engagement boards). Network with commercial entities to bring external experts into IGI entrepreneurial programs

Contracts Management: Act as the primary point of contact between IGI members and contracting teams (Industrial Alliances Office, Sponsored Projects Office). Determine contract purpose, provide necessary forms and process guidance, and liaise between requestors and contractors to track and move the contract process forward (e.g., MTA, CDA, NDA)

Education & Outreach: Provide advice/counsel and develop materials (including guest talks for UCB classes and internal programs) to educate members of IGI on IP, technology transfer, commercialization, and start-up activities

Reporting & Compliance: Oversee and report on the IP budget and activity. Ensure IGI researchers are in compliance with the terms in collaborative research agreements, and help put agreements in place with worldwide non-profit partners regarding equitable access to technologies

Professional Development: Attend seminal national and regional meetings (e.g., in cell/gene therapy, climate) to stay abreast of current biological advances and commercial market trends relevant to IGI research, as well as developments in patent law and research compliance

Qualification

Intellectual Property ManagementTechnology TransferPatent StrategyBusiness DevelopmentContract NegotiationBiotechnology KnowledgeNetworking SkillsAnalytical SkillsCommunication SkillsTeam Leadership

Required

Requires expert, state-of-the-art knowledge of a broad functional work area, and broad application of advanced principles, concepts and theories such as laws, regulations, and practices pertaining to the protection and management of intellectual property, university technology transfer, general scientific and/or technical skills in subject matter area, and management experience

Ability to market technology to industrial partners

Knowledge of contracts, grants and gifts

Able to contribute to development of new concepts and policies

Able to generate pro forma estimates of equity holdings/evaluations

Experience in marketing early stage science and technology

Understanding of basic science, especially biology and genomics

Strong skills at design for publications and visual displays and exhibits

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