Item 3-N, August 21, 2009
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): Ryan Heck
Position #(s): 17512
Current Title: Patent Counsel and Associate Director, UNR/DRI Current Range: 5
Technology Transfer Office (JCC:77807;1A;CA2011;CC043;E)
Department: Technology Transfer Office
College/Division: Vice President,
Research / Dean, Grad School
Account #(s): 1204-121-0812; -0819
Action Proposed: (check all that apply)
( ) New position: Proposed Range:
Proposed Title:
(X ) Title Change, Proposed Title: Patent Counsel and Director, Technology Transfer Office
(X) Proposed Reassignment from Range 5 to Range 6
( ) Revised PDQ only (no change in range or title)
JCC (Current
( ) Line of Progression (show titles below)
or new HR
Range:
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
____________________________________________________________
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Director/Chair/Dean
Marsha Read
Date
Interim Vice President, Research/Dean, Graduate school
Approved for Salary Placement Committee review.
____________________________________________________________
__________________
Pres / Vice Pres / Vice Prov Signature Marc Johnson
Date
Executive Vice President and Provost
Action Approved by the President (Completed by Faculty HR):
Position #:
EEO Code:
CUPA Code:
Job Class Code:
Exempt: Yes or No
Census Code:
Range:
Effective Date:
Approved Title:
____________________________________________________________
__________________
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 – Patent Counsel and Director, Technology Transfer Office
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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 Patent Counsel and Director, Technology Transfer Office, (TTO) directs the joint University of
Nevada, Reno (UNR)-Desert Research Institute (DRI) Technology Transfer Office (TTO) in
accordance with all policies and procedures of the Nevada System of Higher Education (NSHE),
UNR, and DRI. This position reports directly to the Vice President for Research at UNR and the Vice
President of Academic and Business Development at DRI. This position serves as an advisor to
these Vice Presidents and is the primary resource on intellectual property and licensing issues. The
Director interacts with faculty and student inventors, identifying inventions, conducting patentability
searches, filing patent applications, prosecuting patent applications before the U.S. Patent Office and
foreign patent offices, and working to license, commercialize, or otherwise beneficially exploit
UNR/DRI intellectual property. The Director interfaces with the outside community, including
businesses and other educational and research institutions, in order to encourage collaborations to
aid in research activity and commercialization of UNR/DRI intellectual property.
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).
55% - Intellectual Property Protection
 Review invention disclosures
 Meet with faculty and student inventors to determine whether intellectual property protection is
advisable
 Conduct brief patent searches to help assess patentability
 Consult with Director of Intellectual Property Marketing and Business Development to
determine whether intellectual property protection should be pursued, and to determine
appropriate protection strategies
 File patent applications in the United States, internationally, and, when appropriate, work with
foreign counsel to file foreign patent applications
 Prosecute patent applications, including interfacing with inventors to respond to Patent Office
concerns
 Maintain paper and electronic files for UNR and DRI intellectual property
 Interface with outside legal counsel regarding patent applications and patent prosecution
activity
30% - Intellectual Property Outreach, Including Agreements, Licensing, and Marketing
 Draft and review agreements, such as material transfer agreements, non-disclosure
agreements, license agreements, inter institutional agreements, and research agreements
 Work with Director of Intellectual Property Marketing and Business Development to identify
potential licensees and research partners and execute appropriate agreements
 Work with Director of Intellectual Property Marketing and Business Development to asses
market potential and commercial viability of UNR and DRI technologies
10% - Technology Transfer Policy and Administration
 Educate faculty and staff about intellectual property
 Enhance visibility of UNR and DRI research and intellectual property activities
 Disseminate TTO reports as required, i.e., Vice President for Research, Chancellor’s Office,
Technology Transfer Advisory Board
 Oversee UNR and DRI guidelines and regulations related to intellectual property
Position Description – Patent Counsel and Director, Technology Transfer Office
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Manage TTO budget
Manage intellectual property workflow, including managing what work is performed within the
TTO and what work is performed by outside providers
Interface with other UNR and DRI departments, such as the Office of Sponsored Projects,
regarding intellectual property issues
Assist faculty in identifying areas of research conducive to intellectual property protection and
commercialization
Review TTO portfolio to monitor inventor progress, new technology developments, and identify
commercialization opportunities
5% - Position Evaluation and Training
 Manage and train TTO personnel in order to assist in their professional development and
encourage efficient TTO operation
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.
The Director is required to independently make high level administrative and managerial decisions
and judgments in carrying out the duties of the position, which may impact the financial and legal
interests of the Nevada System of Higher Education (NSHE), UNR, and DRI. The Director keeps
upper administration at UNR and DRI informed of developments which could significantly impact the
interests of UNR and DRI. Errors in decisions and judgment regarding programs may result in facility
and resource losses, and may lead to adverse publicity for NSHE, UNR or DRI. Errors in decisions
and judgment regarding regulatory issues and compliance may lead to violations of federal or state
laws and regulations resulting in adverse publicity and fines. Errors in decisions and judgment
regarding personnel and resource management responsibilities may lead to personnel complaints and
loss of resources. Conversely to the preceding, good decisions and judgment may lead to positive
publicity, compliance with regulatory requirements, and potentially millions of dollars in revenue.
Decisions regarding intellectual property protection and resulting work product determine the strength
and breadth of intellectual property protection and can affect the commercial value of UNR/DRI
technologies. This work has the potential to be extremely valuable to faculty and student inventors,
UNR, DRI, and the State of Nevada. Intellectual property, if properly protected, can form the business
foundations for new companies, create new jobs, and bring in significant financial returns to UNR and
DRI and the inventors. If done improperly, significant value can be lost and significant liability can
attach.
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
 Budget development and management
 Patent law
 Copyright law
 Trademark law
 Trade secret law
 Contract and licensing law
 Science and engineering disciplines, i.e., Chemistry, Biology, Physics, Engineering,
Biomedical Sciences, etc.
Position Description – Patent Counsel and Director, Technology Transfer Office
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Skills:
 Excellent interpersonal and human relations skill, diplomacy and tact
 Strong verbal and written communication to include providing presentations, justification, and
recommendations to higher management level
 Negotiation and mediation skills
 Excellent organizational and time management skills
 High attention to detail in work and commitment to work quality
 Leadership
 Financial management
 Strategic planning
 Developing and sustaining effective relationships with faculty, staff, colleagues, government
and community members in an increasingly diverse environment
Ability to:
 Draft and prosecute patent applications, in a wide range of technologies, in both the U.S. and,
with the assistance of outside counsel, foreign countries
 Draft and prosecute copyright applications and trademark applications
 Negotiate and draft agreements related to intellectual property
 Search for patents and other types of intellectual property
 Understand the science behind UNR and DRI technologies
 Administer organization goals and objectives and design and administer new TTO programs
 Understand and interpret formalized policies, guidelines, rules, and regulations
 Work well in a service-oriented team environment and interact effectively with administration,
faculty and staff at all levels of responsibility and with diverse individuals with sensitivity to
cultural differences
 Establish and maintain cooperative working relationships with faculty and other campus
personnel and work collaboratively with, and manage, outside counsel
 Lead and manage with initiative, creativity, tact, and diplomacy and work as a team leader
 Manage, prioritize, and complete multiple projects/tasks in an efficient and timely manner while
maintaining focus on organizational goals
 Research issues, exercise sound judgment to make objective, fair, consistent and appropriate
decisions, and provide solutions
 Maintain confidentiality of sensitive information
 Manage a budget
 Maintain professional business and work ethics and standards of service and professional
demeanor in a frequently stressful environment
 Meet deadlines
 Travel as needed
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
Faculty and student inventors
Students
TTO staff
Reason for Contact
To learn about their technology and determine whether intellectual
property protection should be pursued, provide support for
research, commercialization, and intellectual property protection
To educate students regarding intellectual property and alternative
science careers
To work collaboratively to create value in intellectual property
developed by UNR and DRI faculty and students and assist in
career development and training
Position Description – Patent Counsel and Director, Technology Transfer Office
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UNR and DRI administrators
To keep informed regarding intellectual property being developed
or commercialized at UNR and DRI, and the operation of the TTO.
To develop suggestions for improvement of intellectual property
policies and encourage intellectual property related
commercialization and research activities
External
Business representatives from
specific companies
Reason for Contact
To provide information regarding UNR and DRI intellectual
property and negotiate agreements to encourage
research/commercialization activity
To manage intellectual property matters handled by outside
counsel to ensure work being done in a timely and cost effective
manner and aid in improving results obtained
To provide information regarding UNR and DRI intellectual
property and negotiate agreements to encourage research/
commercialization activity
To provide information regarding UNR and DRI intellectual
property and negotiate agreements to encourage research/
commercialization activity
TO provide information regarding UNR and DRI intellectual
property and negotiate agreements to encourage research/
commercialization activity
To educate community regarding intellectual property/
commercialization activity and opportunities at UNR/DRI
To interface with other technology transfer/intellectual property
professionals in order to encourage collaborations with UNR/DRI,
learn about potential ways to improve TTO operations, and
participate in professional development activities
Outside intellectual property
counsel
Faculty, staff, and administrators
from other educational or
research institutions
Investors
Entrepreneurs
Community representatives
Professional community
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.
Law Degree from a nationally accredited institution
b.
Minimum type and amount of work experience, in addition to the above required
education necessary for a person entering this position.
Law Degree and three years of experience in filing and prosecuting patent applications
before the United States Patent and Trademark Office and related activities, including
patent enforcement and licensing experience
Preferred Licenses or Certifications: None
c.
Indicate any license or certificate required for this position.
Licensed to practice law in the State of Nevada, or ability to take the Nevada bar and
become licensed to practice law within the State of Nevada within one year
Registered to practice before the United States Patent and Trademark Office