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Intellectual Property and Contracts Administrator- IL- Office of Research & Sponsored Programs

Company: Midwestern University
Location: Downers Grove
Posted on: May 4, 2022

Job Description:

SummaryMidwestern University (MWU) has a growing intellectual property (IP) portfolio along with an increased number of research-related agreements. The IP & Contracts Administrator will help manage MWU's IP assets by providing professional support in the patenting process and will support research functions by reviewing and negotiating all terms and conditions associated with research-related contracts across both Arizona and Illinois campuses. The IP & Contracts Administrator will be located on MWU's Downers Grove, IL campus in the Office of Research & Sponsored Programs (ORSP) and will report to the Associate Director of ORSP.Essential Duties and ResponsibilitiesContract-Related Work Performed

  • Assist in the review, drafting, negotiation, and tracking of a wide variety of research-related contracts, grants, and technology transfer contracts with private industry, academic and non-profit institutions, and state, local, and federal entities while keeping MWU's best interests in mind
  • Assist primarily with the negotiation of Confidentiality Agreements, Data Use Agreements, Material Transfer Agreements, Assignment Agreements, grant agreements, and subawards; support the department in the review and negotiation of other types of agreements, as needed
  • Work with Grant Specialists on grant agreements and subawards; ensure ORSP is aware of and can comply with grant and subaward terms and conditions
  • Collect information from the client needing a contract and other stakeholders in order to select the best agreement, customize agreements, ensure the agreement meets needs, aligns with MWU policy, and ensure the details of the arrangement and research are accurate
  • Identify contractual risks, challenging terms and provisions, MWU obligations, statutory and regulatory compliance requirements, and when to consult with ORSP supervisors regarding the same
  • Explain contract language, terms, conditions, and requirements to faculty, as needed, so that the researchers understand their obligations, particularly, special or unique responsibilities, MWU risks, and why MWU is accepting or not accepting certain provisions
  • Perform other assignments, as requested by the Associate Director of Research & Sponsored ProgramsIP-Related Work Performed
    • Assist in MWU's invention disclosure processing, including supporting MWU's patent committee
    • Provide support and assistance to inventors submitting invention disclosures to the ORSP and provide updates and feedback to the inventors
    • Encourage and support a culture which increases the number of invention disclosures filed by the MWU community
    • Review invention disclosures for completeness and an eye toward commercial applications
      • Provide information to MWU IP consultants and inside and outside counsel to assist in determining patentability and to oversee adherence to application timelines
      • Assist in making recommendations regarding whether patent protection should be sought
        • Assist in establishing and maintaining a database for patent prosecution and docket management
        • Monitor and process law firm patent prosecution correspondence and take appropriate action; ensure correspondence, deadlines, and documents are identified, addressed, and docketed
        • Maintain IP files and records
        • Work with inventors and outside counsel to acquire information and legal documents necessary for patent prosecution
        • Review law firm invoices for reasonableness, accuracy, adherence to agreed-upon fees, and record costs
        • Assist in establishing and maintaining database for license agreements
        • Assist in developing a license monitoring program to ensure licensees comply with licensing obligations, particularly milestone and royalty payments
        • Develop and maintain reports on licensee compliance
          • Work with IP consultants to help develop appropriate commercialization strategies for IP, including identifying prospective licensees
          • Develop, present and/or coordinate workshops and/or lectures on IP and commercializationSupervisory ResponsibilitiesThis job has no supervisory responsibilities.QualificationsTo perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the knowledge, skill, and/or ability required. Must be able to work in a constant state of alertness and safe manner and have regular, predictable in-person attendance. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.Education and/or ExperienceBachelors degree in a related field is required. A paralegal degree and or paralegal certification from an American Bar Association-approved program is desired. Must have at least 3 years of work experience in either a legal office, technology transfer, or contract negotiations and contract administration.Skills
            • Must proficiently collaborate with all members of the MWU community, including outside IP attorneys
            • Display professionalism, genuine service, and a "can-do" attitude with all internal and external clients
            • Exacting attention to detail, high-quality work standards, and the ability to prioritize
            • Excellent analytical, organizational, and communication skills
            • Ability to handle multiple priorities and meet multiple deadlines
            • Skill in the English language and grammar
            • Skill in both verbal and written communication
            • An understanding of the commercialization process
            • Demonstrated experience with or capability to process complex material, including, contract terms, IP law, and data and privacy laws
            • General experience and knowledge of business practices in a legal, research university/college, or healthcare setting, particularly those experiences related to contracts, intellectual property, and technology transferComputer SkillsComputer proficiency in MS Office (Word, Excel, Outlook, Access, etc.) and Adobe Acrobat.Language SkillsIntermediate skills: Ability to read and interpret documents such as safety rules, operating and maintenance instructions, and procedure manuals. Ability to write routine reports and correspondence. Ability to speak effectively before groups of customers or employees of the organization.Reasoning AbilityIntermediate skills: Ability to apply common sense understanding to carry out instructions furnished in written, oral or diagram form. Ability to deal with problems involving several concrete variables in standardized situations.Mathematical AbilityBasic skills: Ability to add, subtract, multiply, and divide all units of measure using whole numbers, common fractions, and decimals. Ability to compute rate, ratio, and percent and to interpret bar graphs.Physical DemandsThe physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.While performing the duties of this job, the employee is occasionally required to stand. The employee is regularly required to walk; reach with hands and arms. The employee is frequently required to sit, use hands to finger, handle, or feel; talk and hear. The employee must regularly lift and /or move up to 10 pounds and occasionally lift and/or move up to 25 pounds. Specific vision abilities required by this job include close and distance vision.Work EnvironmentThe work environment characteristics described here are representative of those an employee encounters while performing the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions. This position is occasionally exposed to fumes or airborne particles and outdoor weather conditions. The noise level in the work environment is usually moderate. Midwestern University is an Equal Opportunity/Affirmative Action employer that does not discriminate against an employee or applicant based upon race; color; religion; creed; national origin or ancestry; ethnicity; sex (including pregnancy); gender (including gender expressions, gender identity; and sexual orientation); marital status; age; disability; citizenship; past, current, or prospective service in the uniformed services; genetic information; or any other protected class, in accord with all federal, state and local laws, including 41 C.F.R. 60-1.4(a), 250.5(a), 300.5(a) and 741.5(a). Midwestern University complies with the Smoke-Free Arizona Act (A.R.S. 36-601.01) and the Smoke Free Illinois Act (410 ILCS 82/). Midwestern University complies with the Illinois Equal Pay Act of 2003 and Arizona Equal Pay Acts.#MidwesternUniversityJobsExperienceRequired
              • Must have at least 3 years of work experience in either a legal office, technology transfer, or contract negotiations and contract administration.EducationRequired
                • Bachelors or betterEqual Opportunity Employer/Protected Veterans/Individuals with DisabilitiesThe contractor will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding, hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor's legal duty to furnish information. 41 CFR 60-1.35(c)

Keywords: Midwestern University, Downers Grove , Intellectual Property and Contracts Administrator- IL- Office of Research & Sponsored Programs, Administration, Clerical , Downers Grove, Illinois

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