| Department: | Waterloo Commercialization Office (WatCo) Office of Research | January, 2012 | |
| Grade: |
USG 8 35 hr/wk |
Reports to: | Associate Vice-President Commercialization and Director of the Waterloo Commercialization Office (WatCo) |
The position of WatCo Intellectual Property Administrator reports directly to and is accountable to the Associate Vice-President Commercialization and the Director of the Waterloo Commercialization Office (WatCo) who, in turn, report to the Vice-President, University Research. The incumbent will provide administrative support to the Associate V-P Commercialization, the Director of Commercialization and the other six Technology Transfer professionals within WatCo. The Intellectual Property Administrator will manage and maintain intellectual property (IP) activities and WatCo's patent portfolio.
Filing, prosecuting, and maintaining patents is one of WatCo’s main functions supporting the commercialization of University research outcomes. Securing patents is a means to legally protect intellectual property (IP), and they are considered tangible assets. Patents are the legal asset upon which third party commercial licensing agreements are executed and for which venture capital can be raised against for startup company creation. From an administrative perspective, the patent process is very complex as each patent country jurisdiction has its own procedures and associated deadline dates that have to be actively monitored in order to take appropriate action to keep a patent application prosecution moving forward to ultimate patent issuance. Typically it can take three years for a patent to issue from the date it is first filed, and there will be dozens of inputs\tasks required of WatCo to administratively manage this process over this period. Additionally, once a patent issues there is a requirement to pay annual patent maintenance fees by certain deadlines which have to be monitored and complied with in a timely fashion. Typically it costs about $20,000 per country to get a patent issued, and WatCo typically spends in excess of $300,000 annually on patent related expenses. The University currently owns approximately 260 patents and patent applications and thus the University’s investment in patent assets is significant.
In order to more effectively manage the inherent and growing complexity in administering IP protection activities, WatCo has recently implemented a specialized patent database management system (Inteum). Although the Inteum database provides a very powerful organization platform, it is also, in and of itself, a very complicated software tool that has many facets and interconnections that need to be managed at a constant high level of interactivity. Monitoring and keeping on top of the accuracy of the database information, and more importantly following up on the deadline driven scheduled tasks that the database generates daily requires a dedicated management resource to preserve the integrity of the University’s investment in its patent assets.
The WatCo Intellectual Property Administrator plays a role in supporting WatCo’s mandate to identify, protect (ie. patents) and commercialize intellectual property developed by University researchers in accordance with the requirements of Policy # 73 - Intellectual Property. The Intellectual Property Administrator provides a focal point service in managing all of the administrative steps involved in the intellectual property process beginning with managing the relationship with University inventors who submit their IP for WatCo consideration, liaising with a variety of third party patent agent legal firms, and administration and responding to activities derived from the aforesaid Inteum database management system. The Intellectual Property Administrator is responsible and accountable for autonomously managing his\her activities to ensure and preserve the integrity of the University’s patent assets.
In addition to the core patent management administrative services, the Intellectual Property Administrator also provides other general administrative support such as managing WatCo’s other general filing and record keeping activities, time scheduling of the Associate V.P. Commercialization and the Director Commercialization, and management of financial transactions through the Office of Research-Finance department. The Intellectual Property Administrator often represents the first contact with persons both internal and external to the university who contact WatCo for information or services and must be capable of fielding a variety of intellectual property- related questions and providing as much as possible an independent service-oriented response to such inquiries. In addition to providing general WatCo administrative support, the incumbent is responsible for: i) managing all WatCo record keeping and drafting a variety of WatCo reports\survey responses; ii) managing administration of payment of WatCo purchases, including signing authority for such payments, iii) managing the administration of software-copyright license agreements, and iv) managing UW’s web based technology marketing platforms including content changes (eg. WatCo web site, C4 web site, FlintboxTM). Challenges of the position include being able to multi-task in a high volume workload environment where task priorities are constantly shifting and with a high degree of attention to detail to the many crucial activities that are very time sensitive (i.e matters pertaining to patent deadlines).
The following statistical data is provided:
Liaison with ~340 active UW researchers
Filing of US Provisional patent applications – 15 (2011)
The incumbent will interact with Researchers, Deans, Chairs, students (undergraduate and graduate), government representatives and the private sector, including Patent Agents and Attorneys, as well as WatCo team professionals and Office of Research personnel. This position is identified as the key contact from an administrative standpoint throughout the intellectual property process, providing consistency and alleviating the WatCo team professionals of patent prosecution monitoring details, deadline requirements and compliance issues. In addition the incumbent will be the key person responsible for maintaining the consistency and integrity of WatCo’s intellectual property database record management system (Inteum).
The incumbent is accountable on a day-to-day basis for the seamless operation of WatCo processes, cordial relationships with clientele, the provision of accurate advice, pertinent reports and the handling of WatCo financial issues.
The incumbent is challenged with implementing effective process improvements to enhance efficiency of the delivery of services and reporting. The impact of this position is significant to preserve the integrity of Waterloo’s investment in patent assets from which the WatCo Director and team professionals base their private sector IP commercialization activities.
The incumbent will be required to undertake activities as follows:
- Manage and maintain, in an autonomous manner, the entire sequence of the intellectual property process, from initial inquiry to technology disclosure, to patent filing and technology licensing. This involves:
- providing accurate and detailed advice to faculty/students/staff on how to disclose new intellectual property, which requires a fundamental understanding of patents and intellectual property issues, including legal implications;
- initiating non-disclosure agreements at the request of the technology transfer officers, researchers/inventors, patent agents and companies; and following through to execution and distribution of such agreements;
- overseeing the filing and prosecution of patents, trademarks and copyrights worldwide. Once filed, the application process must move forward proactively through prosecution, taking into account varying laws, processes, critical deadlines, and associated costs that must be monitored as the appropriate patent agent is hired to facilitate the prosecution;
- monitoring executed license agreements for compliance and tracking revenue payments and researcher/inventor royalty payments;
- preparing and negotiating material transfer agreements and non-disclosure agreements in concurrence with the technology transfer officers;
- working closely with the technology transfer officers to monitor intellectual property deadlines, providing bi-weekly reports at team meetings of upcoming requirements and decisions;
- Manage and maintain the WatCo Inteum database required to implement the entire monitoring of the intellectual property protection and commercialization process, as described above. Ensure the accuracy and integrity of the database, recommending updates, changes and development features as required to the WatCo Director and Inteum C/S support personnel. New developments include automatic generation of forms, correspondence, emails, paperless storage and retrieval of confidential documents. Monitor consistency and standardized procedures across all WatCo professional team members. Manage the relationship with Office of Research Inteum support personnel and the Inteum C/S company.
- Train, coach and advise all WatCo professional team members on an as needed basis on the Inteum patent management database, as described above. As WatCo moves towards a mostly paperless file system, it is critical that the database be accurate and up-to-date. The incumbent is responsible for ongoing updates and revisions to the Inteum patent management database User Guide and the Standard Operating Procedures manual.
- Correspond with UW Researchers/Inventors regarding patent prosecution processes, maintenance fees, Agreement particulars, preparation and execution of various Agreements, and royalty payments.
- Correspond with and instruct Patent Agents to proceed with patent prosecution processes, Office Actions, maintenance fee payments and related activities, including signing authority for same.
- Prepare and submit official documents for filing provisional Patent Applications to the US Patent office, including independent authority to incur related expense (i.e, responsible for Scotiabank P-Card transactions)
- In conjunction with the WatCo professional team members, prepare and submit official documents for filing formal patent applications worldwide via contracted Patent Agents.
- Provide general WatCo administrative and secretarial support for the Associate V-P Commercialization, the Director of Commercialization and 6 professional technology transfer managers/officers (ie. filing, couriers, keyboarding, etc..).
- Manage Microsoft Outlook calendars for Associate V-P Commercialization and the Director of Commercialization and coordinate Microsoft Outlook calendars with the other 6 WatCo professional staff (i.e meeting and room bookings, etc.).
- Review legal invoices for accuracy and to make a judgement as to when to contact Patent Agents regarding inconsistencies or incomplete records. Bring Director in on critical matters that seem inconsistent with the degree\type of legal service contracted/unresolved.
- Direct UW Finance to pay WatCo invoices upon Director approval or under the incumbents own signing authority and reconcile all WatCo - Finance financial statements monthly.
- Create and maintain data entry to Excel spreadsheets of the WatCo financial and activity log records (eg. project number, legal costs, royalties, patent info, licensing agreements, non-disclosure agreements, etc.) so as to have information organized in categories that can be retrieved for a wide variety of reporting / survey requirements.
- Provide accurate updated reports monthly and as required to Associate V-P Commercialization and WatCo Director, including obtaining monthly project status updates from 6 WatCo team professionals for biweekly team meetings.
- Manage and maintain WatCo's web based technology marketing internet portals (i.e WatCo web page, FlintboxTM web page, and coordination and liaison with C4 Marketing Manager for C4 web site.)
- Receive Policy #73 disclosure information forms from all UW faculty members and annually update Policy 73 MS Access database and prepare any query based reports that might be requested by the Director, Associate V.P Commercialization or V.P Research.
- Manage WatCo’s software and copyright licensing sale transactions, including attending to the execution of associated license agreements and compliance of license fees owing and terms of agreement.
- Liaise with C4 Coordinator (located at McMaster) to independently prepare and complete, for the Director’s review and approval, separate and different quarterly reports for both the federal and provincial governments.
- Liaise with C4 Coordinator to coordinate WatCo staff’s participation in quarterly meetings, monthly Director’s meetings, and quarterly VPR meetings.
- Maintain, research and periodically update WatCo start-up company database.
- Independently prepare first draft completion of both internal and external information surveys (ie. AUTM, Stats Canada, C4, etc) for Director review.
- Independently work on periodic special projects assigned by Director or Associate V.P Commercialization to support various strategic or operational initiatives (i.e organize campus wide information seminars, participate in OR project teams, etc.).
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University of Waterloo
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Waterloo, Ontario, Canada N2L 3G1
519 888 4567 ext. 35935
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