Patent Docket Manager

Updated: 2 months ago
Location: Duarte, CALIFORNIA

About City of Hope

City of Hope, an innovative biomedical research, treatment and educational institution with over 6000 employees, is dedicated to the prevention and cure of cancer and other life-threatening diseases and guided by a compassionate, patient-centered philosophy.

Founded in 1913 and headquartered in Duarte, California, City of Hope is a remarkable non-profit institution, where compassion and advanced care go hand-in-hand with excellence in clinical and scientific research.  City of Hope is a National Cancer Institute designated Comprehensive Cancer Center and a founding member of the National Comprehensive Cancer Network, an alliance of the nation’s leading cancer centers that develops and institutes standards of care for cancer treatment.

Position Summary:

Responsible for performing a broad range management, administrative, support tasks, within their respective work unit, related to the patenting and licensing of intellectual property developed at City of Hope and affiliates, and to other functions of the Office of Technology Licensing (OTL). Manages both an internal patent team as well as manage external counsel handling IP matters. This position will need to be highly adaptable and must be capable of fully understanding the needs of COH and its stakeholders and prioritize their activities accordingly. Able to multitask efficiently and to interact professionally with internal and external stakeholders. Reports directly to Director of OTL.  

Key Responsibilities include:

  • Performs a variety of duties which may include department/program administration, organizational analysis, fiscal and contractual operations, database input and maintenance, and systems review.
  • Works with the Director in resolving patent and licensee compliance administrative problems.
  • Performs work that requires interpretation of OTL and IP policies.
  • Interprets, monitors and analyzes information regarding operating policies and procedures.
  • Participates in short and long-range planning and policy or program development by analyzing operational policies, resource utilization, etc. and developing recommendations for department management.
  • Receive and review COH invention disclosure documents; work with inventors/staff members to insure completeness and accuracy of disclosures.
  • Prepare and coordinate with outside counsel patent prosecution related paperwork such as Assignments, responses to Notices of Missing Parts, Powers of Attorney, and corrections with the United States Patent and Trademark Office.
  • Facilitate patent review meetings; implement and track patent filing decisions; and oversee docketing of patent prosecution and maintenance activities.
  • Search records and develop reports (e.g., portfolio histories, patent application status, patent family trees, and licensing activity) in response to portfolio management and analysis needs, including inquiries from COH administration, Inventors, sponsors, licensees, or other stakeholders.
  • Serve as OTL point of contact to faculty, inventors, licensees, outside institutions, outside counsel and federal funding agencies relating to patenting, revenue distribution and billing. 
  • Formulate, implement, and document OTL internal policies and procedures, relating to patent prosecution, procedures for outside patent counsel, patent database procedures, and compliance requirements
  • Review, audit, and track patent prosecution files for compliance with federal rules and regulations as well as OTL internal procedures.
  • Provide direction, guidance and coaching to other administrative support staff, and train new administrative staff as needed.
  • Assists Director and other OTL staff in invoicing licensees for payment, as well as gathering, analyzing and reporting data. Monitors invoices and payments, and reports variances. Provides recommendations as requested.
  • Provides recommendations based on significant knowledge of the department’s history, professional objectives and activities.
  • Researches, gathers, analyzes and summarizes data for reports.
  • Follows established City of Hope and department policies, procedures, objectives, performance improvement, attendance, safety, environmental, and infection control guidelines, including adherence to the workplace Code of Conduct and Compliance Plan.  Practices a high level of integrity and honesty in maintaining confidentiality. 
  • Performs other related duties as assigned or requested.
  • Performs invoice and payment functions, including periodic invoicing of licensees, financial reporting, revenue distribution and associated communications with licensees, vendors and COH departments and staff; performs invoice and payment functions required COH accounting and Office of General Counsel, including database entry, financial status reports, final invoices, and final reporting.
  • Manages OTL IP, licensing and operational database system, ensuring it is complete and in compliance with applicable policies; maintains regular communications with department; communicates with fiscal and contractual contacts for problem resolution and information gathering.
  • Assesses needs and resolves issues of the Director related to licensee accounting; performs analysis and support for projects.

Basic education, experience and skills required for consideration:   

  • Bachelor’s Degree.  Experience may substitute for minimum education requirements
  • 5-10 years related experience in legal or business administration and administrative analysis (e.g., contract and patent management).
  • Experience in legal, academic or research environment.
  • Knowledge of patent and legal operations, laws, and terminology.
  • Knowledge of patent related federal and non-federal regulations and operation policies.
  • Experience in designing, analyzing and preparing patent docket reports.
  • Familiarity with Inteum, KSS, and/or Wellspring Sophia.

City of Hope is committed to creating a diverse environment and is proud to be an equal opportunity employer.  All qualified applicants will receive consideration for employment without regard to race, religion, color, national origin, sex, sexual orientation, gender identity, age, status as a protected veteran, or status as a qualified individual with disability. #LI-RA

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