Coordinator, Intellectual Property

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Item 2.E-June 18, 2010
ADMINISTRATIVE FACULTY POSITION DESCRIPTION QUESTIONNAIRE
To expedite and facilitate the PDQ review process, please send the PDQ and Org Chart electronically to
marshag@unr.edu for discussion and for initial review before routing PDQ for approval signatures.
Questions - call UNR Faculty HR at 682-6114
INSTRUCTIONS: See http://www.unr.edu/vpaf/hr/compensation/placement.html for complete instructions.
Incumbent(s) Name (if applicable): New (April E. Sferrazzo)
Position #(s):
Current Title:
Current Range:
(JCC: )
Department: Technology Transfer Office
College/Division: Vice President,
Research
Account #(s): 1204-121-0819
Action Proposed: (check all that apply)
(X) New position: Proposed Range: 2
Proposed Title: Coordinator, Intellectual Property
( ) Title Change, Proposed Title:
( ) Proposed Reassignment from Range
to Range
( ) Revised PDQ only (no change in range or title)
( ) Line of Progression (show titles below)
Range:
JCC (Current
or new HR
assigned):
I certify that the statements in this description are accurate and complete to the best of my knowledge.
____________________________________________________________
Employee’s Signature
__________________
Date
I/we have reviewed the statements in this form and they accurately reflect the job assignments.
____________________________________________________________
Immediate Supervisor’s Signature
__________________
Date
____________________________________________________________
__________________
Director/Chair/Dean
Ryan Heck
Date
Patent Counsel and Director, Technology Transfer Office
Approved for Salary Placement Committee review.
____________________________________________________________
__________________
Pres / Vice Pres / Vice Prov Signature Marsha Read
Date
Vice President, Research/Dean, Graduate School (Interim)
Action Approved by the President (Completed by Faculty HR):
Position #:
EEO Code: 3A
CUPA Code: CM3501
Exempt: Yes or No Census Code: 043
Job Class Code: 67023
Range: 2
Effective Date: 6/1/2010
Approved Title:
COORDINATOR, INTELLECTUAL PROPERTY
____________________________________________________________
__________________
Employee Signature
Date
(Employee signs and sends to HR for personnel file after PDQ has been “final” stamped for approval)
Rev: 12/1/2008
Position Description – Coordinator, Intellectual Property
Page 2
1. Summary Statement: State the major function(s) of the position and its role in the
university. Attach an organizational chart with positions, ranges, and names for the division
which reflects the position in it as well as those supervised in the department. (This section is
used for advertisement of the position.)
The Coordinator, Intellectual Property, is the office operations administrator, coordinator of Intellectual
Property and Licensing, and manager of compliance requirements. The incumbent tracks, manages,
and takes appropriate actions to assist the Patent Counsel and Director of Technology Transfer Office
(TTO) and outside law firms with intellectual property related deadlines and documents. The
incumbent monitors license agreements and distributes licensing revenue to inventors and other
stakeholders. The Coordinator tracks, manages, and processes operating revenues and expenses
for the TTO.
2. List the major responsibilities, including percentage of time devoted to each. Provide
enough detail to enable a person outside the department to understand the job (percentage
first with heading and then bulleted information).
25% - Patent, Copyright, and Trademark Application Preparation
 Prepare preliminary materials for submitting in house patent filing and patent prosecution
documents
 Coordinate patent, copyright and trademark application preparation, filing and approval
25% - Law Firm and Licensee Liaison
 Provide information and assistance to outside law firms and licensees with preparation and
prosecution of patent, copyright, and trademark applications, as directed
 Respond to requests from outside law firms and licensees for assistance with filing and
prosecuting patent applications
15% - Patent Prosecution Activity Tracking
 Track patent prosecution activities, using information from Inteum (technology transfer
management) database, U.S. Patent and Trademark Office (PTO) website, TTO files, and
outside law firms
 Maintain the Inteum database with all incoming and outgoing information and correspondence
and an up-to-date physical filing system for each technology
15% - TTO Expenses and Revenue Management
 Track revenue and expenses within the department using Excel spreadsheets and the Inteum
database
 Generate and prepare all required monthly financial reports; completed by reporting deadline
 Prepare monthly budget updates by reporting deadline
 Obtain annual contracts with outside law firms and manage law firm purchase orders
 Monitor patent costs and track expenses to be reimbursed by licensees
 Examine revenues, including reimbursement of patent costs by licensees, received for
accuracy and deposit in the proper Technology Transfer Office account
 Monitor revenue accounts for due dates and payment submission
 Calculate proper payments and distribution of revenue to inventors, departments, and TTO
upon receipt of each revenue payment to TTO
 Examine all accounts payable items and prepare for Director’s signature authorization. Upon
authorization, dispatch items to proper department for paymentTrack legal fees/expenses paid
on behalf of Desert Research Institute and send quarterly invoices to Desert Research
Institute for reimbursement
Position Description – Coordinator, Intellectual Property
Page 3
15% - Reporting Standards Maintenance and Submittal
 Review and determine the government reporting status of each technology on file as well as
all new technologies disclosed to TTO
 Ensure federally required documentation is on file for each technology
 Prepare and submit all required government reports, and associated tasks, within the report
deadline parameters
 Review patents/patent applications to ensure they contain any required governmental support
information
5% - Patent Document Processing
 Promptly contact parties needed to sign documents and follow up diligently until documents
are properly signed
 Create and audit documents for accuracy prior to signature
 Transmit documents to outside law firms or file/prepare for in house filing, as appropriate
3. Describe the level of freedom to take action and make decisions with or without
supervision and how the results of the work performed impact the department, division and/or
the university as a whole.
Level of Freedom:
While many of the Coordinator’s responsibilities are influenced by legal requirements, such as
deadlines, the incumbent must independently decide what is necessary to comply with those
requirements. Most of the Coordinator’s actions and work product are not subject to review.
Impact:
When carried out properly, the coordinator’s work ensures successful TTO operation, including
compliance with legal requirements, protection of University intellectual property, and accurate receipt
and distribution of TTO income. Failure to carry out Office Administrator functions can cause
budgetary issues, loss of legal rights, non compliance with legal requirements, liability for the
University, and faculty/staff/student dissatisfaction.
4. Describe the knowledge, skills (to include cognitive requirement and verbal and written
communication), and abilities (to include task complexity, problem solving, creativity and
innovation) essential to successful performance of this job (in bullet format).
Knowledge of:
 Policies and procedures in a higher education setting
 Accounting principles, including those necessary to prepare and reconcile accounts receivable
and accounts payable,financial reports as well as a working knowledge of Microsoft Excel.
 Knowledge of TTO accounting systems
 Patent law, particularly paralegal level knowledge of patent deadlines and procedures
 Policies governing inventions created using federal funds, including working knowledge of the
Bayh-Dole Act, iEdison, and reporting criteria timelines
 Working knowledge of technology transfer management database software
 Financial management
Skills:




Excellent interpersonal and human relations skill, diplomacy and tact
Strong verbal and written communication skills
Excellent organizational and time management skills
Attention to detail
Position Description – Coordinator, Intellectual Property
Page 4
Ability to:
 Interact effectively with administration, faculty and staff at all levels of responsibility
 Independently manage, prioritize, and complete multiple projects/tasks in an efficient and
timely manner while maintaining focus on organizational goals
 Be self-motivated
 Maintain confidentiality of sensitive information
 Work well in a service-oriented team environment
 Manage budgets, track expenses, income, and distributions, and prepare documents
accomplishing same
 Maintain standards of service and professional demeanor in a frequently stressful environment
 Understand articulate formalized policies, guidelines, laws, rules, and regulations
 Meet deadlines
 Research issues, provide solutions, and make appropriate decisions within previously defined
parametersMaintain professional business and work ethics and standards
5. Describe the type of personal contacts encountered in performing the duties of the job.
Explain the nature and purpose of these contacts: i.e., to provide services, to resolve
problems, to negotiate.
Internal
Patent Counsel and Director
Program Manager
Director of Intellectual Property
Marketing and Business
Development
General Counsel’s
Office/Provost Office/President’s
Office/Chancellor’s Office
Faculty/Staff
Sponsored Projects Office
External
Outside law firms
Licensees
Reason for Contact
To primarily and directly support activities of Patent Counsel and
Director, advise director on budgetary and compliance issues
To coordinate on some duties, including maintaining database and
files, and preparing reports; to some extent fill in for each other
when the other is absent
To assist with Director of IP Marketing with budgetary and
licensing issues
To route documents for Provost/President/Chancellor approval
To assist faculty with invention disclosures, patent revenue
distributions, compliance issues, and issues related to intellectual
property protection
To coordinate with sponsored projects office regarding compliance
with federal reporting requirements for intellectual property created
using federal funds
Reason for Contact
To assist with invoices, patent deadlines, patent documents,
ensuring that patents and patent applications list any government
support information; attention to obtaining legal contracts, and
corresponding with law firms regarding invoices
To manage license income, license reports, reimbursement of
patent costs, and coordinate intellectual property issues
Position Description – Coordinator, Intellectual Property
Page 5
6. Indicate the minimum qualifications which are necessary in filling this position should it
become vacant. Please keep in mind the duties/responsibilities of the position rather than the
qualifications of the incumbent.
a.
Minimum educational level, including appropriate field, if any.
Bachelor’s degree from a regionally accredited institution
b.
Minimum type and amount of work experience, in addition to the above required
education necessary for a person entering this position.
Bachelor’s Degree and two years of experience as a paralegal
Preferred Licenses or Certifications: Paralegal training or certificate/certification
c.
Indicate any license or certificate required for this position.
None
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