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The Intellectual Property Compliance Administrator supports commercialization of the Institution’s technologies by ensuring that the Institution complies with its intellectual property reporting obligations to all organizations that fund research at the Institution, particularly the federal government, and maintain the accuracy of the Institution’s patent data. This individual demonstrates experience with intellectual property reporting requirements established by the Bayh-Dole Act and the ability to understand various contracts, including Sponsored Research and License Agreements. Working closely with the MSIP Operations Team, the Intellectual Property Compliance Administrator also performs day-to-day maintenance of intellectual property data. The Intellectual Property Compliance Administrator also intakes new technology disclosures received through MSIP’s online invention disclosure portal. Specific responsibilities are outlined below.
Reporting Intellectual Property Activities
- Complete all intellectual property reporting obligations, including reporting of inventions, resulting patents, license agreements, and products, within required timeframes as specified in the relevant funding agreement
- Respond to requests for information about intellectual property related to funding agreements
- Use Interagency Edison (iEdison) website and other platforms to execute intellectual property reporting obligations related to federal reporting, including recording confirmatory licenses, government support clauses in patent applications, utilization reports, and other documents; resolving notification messages; and coordinating reporting with co-inventors' institutions
- Confer with Business Development staff members regarding intellectual property reporting compliance issues; follow up as necessary to resolve such issues
- In coordination with the Office of Grants and Contracts, determine funding award dates and participate in grant close-out procedures.
- Serve as the Institution’s primary point of continuous contact with the National Institutes of Health’s Division of Extramural Inventions and Technology Resources; obtain guidance on best practices to meet the agency’s reporting requirements
- Serve as an expert on the Bayh-Dole Act by maintaining a working knowledge of current federal rules and regulations; maintains rapport with regulatory personnel in an effort to facilitate resolving concerns. Research regulations by reviewing regulatory bulletins and other sources of information; communicates with other staff members as to updates and changes in reporting requirements.
- Maintains professional and technical knowledge by attending educational workshops, reviewing professional publications, establishing personal networks, benchmarking state-of-the-art practices and participating in professional organizations.
- In coordination with the Chief Information Officer, proactively maintain intellectual property data quality. Analyze and maintain the data integrity of disclosures, patents, and relationships in the MSIP tracking and management systems. Regularly audit database records to ensure the department's records are up-to-date, reconciled, and complete.
- Record new invention disclosures from inventors in internal database (i.e., Inteum), obtain additional information from inventors as necessary, and conduct due diligence to verify funding sources, reporting obligations, and other information. Maintain a schedule for follow-up.
- Confer with Business Development to assign new invention disclosures to the appropriate member of the Business Development team; follow up on any changes in assignment
- Generate and send disclosure acknowledgement letters and inventor share notices to faculty
- Process all emails regarding intellectual property reporting, patent data administration, and new technology disclosures.
For more information about Mount Sinai Innovation Partners, go to www.ip.mountsinai.org.
- Bachelor’s Degree in a related field of study. Scientific degree preferred.
- 3+ years minimum experience is preferred, with proven experience setting and meeting on-going deadlines, especially continuous deadlines for gathering and reporting information to a government or not-for-profit agency
- Track record of successfully curating mission-critical data, preferably patent data, including timely and accurate inputting of data and outputting of reports
- Demonstrated capability to understand intellectual property data and processes, including data and processes from foreign jurisdictions
- Demonstrated experience understanding complex documents, preferably contracts and regulatory documents (e.g., Federal Register, Code of Federal Regulations, policy documents).
- Expertise with iEdison and Inteum strongly preferred
- Intermediate/Advanced knowledge of standard office software packages (e.g., Word, Excel, PowerPoint, etc.)
- Demonstrated capability to learn, manage, and maintain software tools, such as databases and web-based portals.
- Experience with patents in a not-for-profit research institution preferred.
- Strong attention to detail and accuracy is a must
- Positive, energetic, and enthusiastic approach
- Sound judgment and critical thinking
- Ability to function well as a contributor to interdisciplinary groups
- Excellent written and oral communication, interpersonal skills, and customer service skills
- Ability to work independently and effectively
- Proficiency in resolving issues and following-up
- Takes ownership and initiative
- Enjoys working in a collaborative environment