Patents Manager, Office of Technology Commercialization

Job Title: Patents Manager

Position Overview: Patents Manager will manage the intellectual property (IP), licensing, and research contracts portfolio of the Office of Technology Commercialization. This role involves advising clients on IP rights, managing patent filings, and ensuring compliance with patent laws and regulations. The Patents Manager will collaborate with researchers, institutions, and external partners to support innovation, facilitate commercialization, and protect intellectual property rights. They will lead efforts to negotiate and draft agreements, including licensing, research, material transfer and confidentiality while ensuring compliance with applicable laws and institutional policies. Patents Manager will also work with the AVP Innovation in supporting intellectual property protection with external law firms and working with external parties on agreement compliance. In addition to tasks assigned by the AVP Innovation, VPR and General Counsel, the position will have the following responsibilities.

Key Responsibilities:

Intellectual Property Management:

• Evaluate and oversee IP protection strategies, including patents, trademarks, and copyrights.
• Collaborate with researchers to identify inventions and determine commercial viability.
• Manage relationships with external patent counsel to ensure timely and cost-effective prosecution of IP assets.
• Draft, file, and prosecute patent applications with domestic and international patent offices.
• Conduct patentability assessments, freedom-to-operate analyses, and IP due diligence.
• Manage and maintain patent portfolios, ensuring compliance with renewal deadlines and other requirements.

Licensing and Commercialization:

• Develop and execute licensing strategies for technologies and innovations.
• Working with AVP Innovation to negotiate terms for licenses, sublicenses, and collaborative agreements.
• Provide advice and counsel on patent-related matters, including licensing, enforcement, and infringement issues.
• Assist in negotiating and drafting IP-related agreements, such as licensing and joint development agreements.

Research Contracts:

• Draft, review, and negotiate certain research-related contracts, including Material Transfer Agreements (MTAs),and Confidential Disclosure Agreements (CDAs).
• Ensure compliance with federal regulations, institutional policies, and funding agency guidelines.

Patent Litigation and Enforcement:

• Develop strategies for patent enforcement and defense to protect clients' interests.
• Collaborate with external counsel when required for complex litigation matters.

Collaboration and Education:

• Educate faculty, researchers, and clients on IP policies, technology transfer processes, and commercialization opportunities.
• Build networks within academia and industry to promote institutional research capabilities.
• Work closely with inventors, researchers, and R&D teams to understand technical innovations.
• Build and sustain strong client relationships through responsive and effective communication.

Strategic Leadership:

• Monitor trends in technology transfer, IP law, and industry to inform decision-making.
• Stay updated on changes in patent laws, policies, and regulations globally.

Qualifications:

Education:

• Juris Doctor (JD) or Master of Laws (LLM) required.
• Admission to New Jersey bar and registration with the USPTO as a Patent Attorney. 
• Additional technical background in a STEM field is preferred.

Experience:

• Minimum of 5-7 years of experience in technology transfer, licensing, or a related field.
• Minimum of 3-5 years of experience in patent prosecution, litigation, or related IP legal practice.
• Demonstrated expertise in negotiating and drafting IP-related agreements.
• Familiarity with federal research compliance regulations (e.g., Bayh-Dole Act).

Skills:

• Strong understanding of IP law and commercialization processes.
• Excellent negotiation, drafting, and communication skills.
• Proven ability to build relationships with diverse stakeholders.
• In-depth knowledge of patent law, including U.S. and international systems (e.g., PCT, EPO).
• Strong analytical and problem-solving skills with attention to detail.
• Proficiency in managing multiple priorities and meeting deadlin