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Associate Legal Officer/Intellectual Property (IP) Attorney (In-State Remote)

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Executive - Business Professional
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UTMB Health
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2404281 Requisition #

Job Summary:

The University of Texas Medical Branch ("UTMB Health") is seeking an Associate Legal Officer for the Department of Legal Affairs. The IP Transactional Group of the Department of Legal Affairs is charged with the facilitation, evaluation, management, and protection of The University of Texas Medical Branch’s intellectual property assets. 

Job Description:

Under supervision, provides professional legal guidance, service, and assistance to UTMB departments and administration.

Specific Job Related Duties:

  • Advise and assist with the evaluation of UTMB’s patent applications by working directly with UTMB's Office of Technology Transfer, faculty and staff, and outside patent counsel to create and manage UTMB’s developed technology’s patent portfolio.
  • Review invention disclosures of UTMB’s technology in accordance with U.S. Patent Laws.
  • Provide reports for invention dispositions to enable UTMB to make informed decisions regarding whether to pursue patent protection.
  • Ensure patent compliance of UTMB’s developed technology by timely reporting required information to government agencies.
  • Maintain the invention disclosure and patent docket.
  • Manage outside patent counsel’s invoices and determine cost-saving initiatives.
  • Discuss potential inventions and discoveries with faculty and coordinate with inventors to ensure milestones are reached for patent development.
  • Negotiate contracts such as CDAs, MTAs, and industry-funded research & license agreements in compliance with UTMB and UT System IP policies and guidelines.
  • Conduct training courses on the protection and management of IP for the faculty researchers, postdoctoral students, and contract personnel of the UTMB Community.
  • Assure that the Assistant Vice President (Intellectual Property) is informed of developments in projects and activities and provides status reports, as requested.
  • Prioritize work effectively and complete work within designated timeframes.
  • Establish and maintain positive and effective working relationships within the department, UTMB, The University of Texas System, and the local community.
  • Adhere to internal controls and reporting structure.
  • Perform related duties as assigned.

Fully remote work but must reside within the state of Texas and be available for occasional onsite meetings as requested

Minimum Qualifications:

  • Jurisprudence degree from an accredited law school and eligible for admission to the State Bar of Texas.
  • Admission to the State Bar of Texas must occur within 12 months of hire.

Preferred Qualifications:

  • Admitted to practice law in Texas.
  • Admitted to practice before the US Patent & Trademark Office.
  • Bachelor's degree in biology or a related biological field is highly desired.  The ideal candidate will have a Master's degree or PhD degree in biology, immunology, microbiology.
  • One year of experience prosecuting US and foreign patent applications related to the biological sciences (small molecules, pharmacology, and immunology).
  • One year of experience in contract negotiations, preferably research contracts, material transfer agreements, confidentiality, funded research agreements, and collaboration agreements.

 

Preferred Skill/Competency:

  • Ability to handle a high-volume workload timely and efficiently without compromising the quality of work product.
  • Excellent organizational skills.
  • Problem-solving and analytical skills.
  • Ability to work as a team player.
  • Ability to build and maintain positive working relationships.

Equal Employment Opportunity:

UTMB Health strives to provide equal opportunity employment without regard to race, color, religion, age, national origin, sex, gender, sexual orientation, gender identity/expression, genetic information, disability, veteran status, or any other basis protected by institutional policy or by federal, state or local laws unless such distinction is required by law. As a VEVRAA Federal Contractor, UTMB Health takes affirmative action to hire and advance women, minorities, protected veterans and individuals with disabilities.

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