IP/Portfolio Management, Licensing, Technology Transfer and Commercialization
4 Year Degree
The Manager, IP and License Compliance is responsible for development and execution of the strategy and continuous improvement of the ATCC licensing compliance and IP program to extract value from ATCC assets and intellectual property (IP), by ensuring compliance with third-party agreement obligations and ensuring protection of ATCC’s trademark, name and reputation around the world. Incumbent is responsible for the management of ATCC’s in-license portfolio and various other IP issues, including patent, trademark and trade secret matters, as well as freedom-to-operate assessments and management of outside legal IP and compliance counsel. The incumbent is also responsible for ensuring enforcement of the material transfer and material deposit agreement processes and executing the contract management process by developing best practices for compliance with in- and out- contractual obligations. This position must work and think independently; duties of this position are to be completed under minimal guidance. The incumbent actively supports, complies with and enforces all ATCC company policies and procedures.
Develops and manages day-to-day operations of the contract management, intellectual property and compliance process for ATCC assets, to ensure adequate protection of the ATCC brand; Identifies areas for improved business processes and develops best practices to be approved and implemented; Supervises at least one Compliance Specialist.
Manages the contract compliance function to ensure effective management of the entire agreement lifecycle, including active follow-up with licensees regarding progress reporting and amendments as needed to revise the rights granted.
Develops strategy for the review and processing of freedom-to-operate (FTO) requests, invention disclosures and to support new ATCC research, development and collaboration efforts; supports the ATCC Patent Deposit Group in interpretation and compliance with the Budapest Treaty, USPTO and foreign patent office regulations.
Manages ATCC’s Trademark Compliance Program to protect the ATCC brand, including investigating unauthorized use of ATCC’s trademarks, supervising outside consultants and counsel, and providing advice on regular use and protection of ATCC trade and service marks, marketing materials, catalogs and other publications.
Develops and oversees the Product Compliance Program to protect the ATCC brand, including the coordination of investigation of non-compliance matters such as infringers or counterfeiters, directs outside consultants and counsel, coordinates management review of potential litigation matters, and negotiating license arrangements with violators.
Working with outside counsel, researches additional legal issues including regulatory, anti-competitive, product liability, insurance and other matters to support ATCC licensing and related business efforts, and oversees the implementation and enforcement of ATCC material transfer agreement process.
Evaluates and recommends outside legal counsel for engagement by ATCC as needed to support the above intellectual-property and trademark-related activities.
Manages the activities of outside counsel and tracks outside counsel billing to forecast forward-looking spend and assist with budget planning.
Utilizing the Inteum database, records and monitors all aspects of trademark and product compliance matters to recommend strategy for Compliance Program, aligned with corporate strategies and goals.
Carries out supervisory responsibilities in accordance with the organization’s policies and applicable laws. As necessary, engages and manages additional temporary or long-term staff.
Performs other duties as required.
Education and Experience:
Advanced degree in business, law or health sciences may be substituted for equivalent work experience.
Knowledge, Skills and Abilities:
Registered Patent Agent highly desirable.
High level of business acumen and critical thinking abilities.
Familiarity with USPTO regulations, 37 C.F.R., and related WIPO-administered treaties is desirable.
Experience with software focused on deal management, IP management or contract management; experience with Inteum database highly desired.
Internal Number: 2018-2165
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