Intellectual Property and Contracts Administrator- IL- Office of Research & Sponsored Programs
Company: Midwestern University
Location: Downers Grove
Posted on: June 18, 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.#MidwesternUniversityJobs#CBExperienceRequired
- 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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