Intellectual Property Docket Manager (Hybrid/Remote)

Intellectual Property Docket Manager (Hybrid/Remote)

Required Qualifications (as evidenced by an attached resume):

Bachelor’s degree (foreign equivalent or higher) or, in lieu of Bachelor’s degree, Associate’s degree (foreign equivalent or higher) and Paralegal Certificate may be considered. Three (3) years of full-time administrative and legal docketing experience. High proficiency with Microsoft Office and/or Google Apps.

Preferred Qualifications:

Bachelor’s degree (foreign equivalent or higher). Paralegal Certificate (ABA Paralegal Preferred). Five (5) years of full-time administrative and legal docketing experience. Experience in intellectual property docketing or administration. Experience with portfolio/docket management software (e.g., Inteum, Computer Packages Inc (CPi). Knowledge of government and/or university invention reporting. Experience with university or government technology transfer docketing. Experience using Artificial Intelligence (AI) programs and technical proficiency in the use of AI programs.

Brief Description of Duties:

The Docket Manager (DM) will report to the Executive Director of Operations (Ex. Director) and work with Stony Brook University’s (University) Intellectual Property Partners (IPP). The DM will be responsible for maintaining and updating IPP’s intellectual property (IP) docket using an internal software database and outside vendors such as Computer Packages Inc. The DM position will ultimately be expected to exhibit and maintain complete command of the University’s IP docket and related processes, to enable the DM to assess and implement process and workflow improvements that may arise over time such as, the incorporation of AI programs inoperating procedures. The DM will be expected to update and file records electronically, request and obtain IP-related documents and execute the same. The DM will also work with the Contracts & IP Docketing Officer (CIPDO) to assist with reporting University inventions and IP to sponsors, including the federal government. The DM will work well in a team with strong communication skills (verbal and written). High attention to detail is essential for this role. The successful incumbent will be a fast learner with appetite for career growth in Intellectual Property Docketing. This position requires independent judgment and decision-making ability. Candidates will be expected to handle sensitive information with the utmost discretion and confidentiality. Ensure timely responses to deadlines related to patents, trademarks, and other IP protections in order to mitigate financial losses stemming from improper IP management and/or compliance failures. The DM will also engage with outside counsel, University faculty and staff, as well as IPP staff and leadership in a team setting to participate and assist in mission specific projects.

• Intellectual Property Docketing: Review and upload all IPP-related, copyright, trademark, patent and patent application documents in IPP’s patent management system including, for example, obtaining the same from IPP’s internal and external IP counsel. Assist and provide support for processing new technology disclosures (NTD) through IPP’s electronic inventor’s portal and patent management system. Obtain, process, and docket all IP-related supporting documentation including, but not limited to, Information Disclosure Statement (IDS) documents, Assignments, Powers of Attorney, and Declarations. Assist IPP with internal processes regarding the same, such as requesting Supplemental IDS searches. Generate, process and maintain accurate IP docket reports for IPP’s case managers, and timely process/docket instructions. Process, provide, and obtain IPP’s patent portfolio information with their external annuity/fee management firm including, conveying instructions, and obtaining and reviewing reports.DM will conduct regular searches on publicly available databases for newly issued and published Research Foundation patents and patent applications and carry out internal processes regarding the same, such as IPP new patent announcements
• Sponsor Compliance: DM will provide CIPDO with support on all government reporting and compliance-related tasks for all federal sponsors through NIST and iEdison. For example, the disclosure of federally funded inventions to the government sponsor, patent application and final invention reporting, utilization reporting, and elections to retain title through use of the appropriate government database. This also will include processing government licenses related to IPP inventions and patent applications, and updating the appropriate government database when inventions or patent applications are returned to the government or inventors. DM will provide CIPDO with similar support for all industry and non-profit sponsors.
• Office Liaison: Interacts via phone, email and in-person meetings with inventors, outside counsel, University and Research Foundation administration on all facets of IPP’s intellectual property administration and docketing, with particular emphasis on NTDs, patent application and patent assignments, powers of attorney, inventor declarations, as well as patent and patent application documents.
• Departmental Project and Process Support: Continuously refine and improve operations related to the role, such as business workflows, standard operating procedures, and information system practices related to docketing including, for example, the vetting and implementation of AI programs. Active member of the patent management system User Group and in-house super-user.
• Other duties as assigned.

Special Notes:
The Research Foundation of SUNY is a private educational corporation. Employment is subject to the Research policies and procedures, sponsor guidelines and the availability of funding. FLSA Non Exempt position, eligible for the overtime provisions of the FLSA.

Due to U.S. Export Control laws and regulations, the candidate hired will need to be a U.S. citizen, lawful permanent resident, or other "protected individual" (as defined by 8 U.S.C. Sec. 1324b(a)(3).

This position may be eligible for alternative workplace arrangements/telework (remote or virtual) or hybrid.

Resume/CV and cover letter should be included with the online application.

Stony Brook University is committed to excellence in diversity and the creation of an inclusive learning and working environment. All qualified applicants will receive consideration for employment without regard to race, color, national origin, religion, sex, pregnancy, familial status, sexual orientation, gender identity or expression, age, disability, genetic information, veteran status and all other protected classes under federal or state laws.

If you need a disability-related accommodation, please call the university Office of Equity and Access (OEA) at (631) 632-6280 or visit OEA.

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The starting salary range (or hiring range) to be offered for this position is noted below, it represents SBU’s good faith and reasonable estimate of the range of possible compensation at the time of posting.